'CS^  LAW  BOOKS  %1 


UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


A 


io 


UNDERWOOD'S 

Interference  Practice 


BY 

HOMER  C.  UNDERWOOD 
DETROIT,  MICH. 


Published  by 

PATENT  LAW  PUBLISHING  COMPANY 

408  Buhl  Block 
DETROIT,  MICH. 


T 

{.in  1(^5'l 

mo 


Copyright  1920 

by 

Homer  C.  Underwood 


PREFACE. 

In  the  preparation  of  this  work  I  have  sought  to  con- 
fine the  text  to  matters  which  pertain  particularly  to 
Interferences  and  to  cover  all  the  important  points  which 
have  been  the  subject  of  controversy  in  the  past  twenty 
years  and  which  have  not  been  rendered  entirely  obsolete 
by  changes  in  the  Rules  of  Practice  in  that  period.  Many 
old  cases  are  considered,  but  they  are  such  as  are  believed 
might  have  a  bearing  upon  the  construction  of  present 
rules.  I  have  considered  that  brevity  in  the  statements 
of  points  of  law  would  be  more  useful  than  extended 
argument.  It  is  assumed  that  those  who  use  the  book  are 
familiar  with  the  subject  in  general  and  all  they  need  in 
the  conduct  of  a  case  is  a  reminder  of  the  points  which 
may  be  made  and  a  citation  of  authorities  relating  there- 
to. Without  such  reminder  one  may  overlook  important 
points  of  evidence  which  might  be  presented.  A  busy 
lawyer  can  not  stop  to  read  a  volume  on  evidence  before, 
or  at  the  time  of  taking  testimony,  hence  evidence  is 
herein  treated  in  a  limited  sense,  relating  to  those  matters 
which  are  most  likely  to  arise  in  taking  testimony  in  an 
Interference. 

I  send  this  book  forth,  hoping  that  it  may  aid  in  a  more 
accurate  presentation  of  causes  and  in  developing  a  more 
uniform  practice. 

Your  obedient  servant, 

Homer  C.  Underwood. 

Detroit,  Michigan. 


TABLE  OF  CASES. 

Section 

Adams,  119  O.  G.  650  (1905)   14 

Adams  v.  Miu-phy,  96  0.  G.  845 ;    1901  C.  D.  401 156 

Adams  V.  Eandall,  125  0.  G.  1700   (1906)    202,  212 

Adams  v.  Uebelacher,  99  0.  G.  2966;    1902  C.  D.  220 100 

Agawam  v.  Jordan,  7  Wall.  583   106, 164 

Alexander  v.  Blackman,  121  O.  G.  1979  (1906)  ;    26  App.  D. 

C.  541   189 

Alfree  v.  Sarver,  122  O.  G.  2391   31 

Allen,  Comr.,  127  O.  G.  2398  (1907)    21 

Allen  V.  Lowry,  116  O.  G.  2253  (1905)    85,  86,  245 

Allen  V.  Ames,  21  Gour.  66-6  (Sept.,  1909)   49 

AUis  V.  Stowell,  85  Fed.  481  216 

Ames,  Jr.  v.  Ryan,  238  O.  G.  1639  (1917)    52 

Anderson  v.  Wells,  122  O.  G.  3014  (1906)    163 

Anderson  v.  Peck,  133  0.  G.  229 ;    1908  C.  D.  66 41 

Anderson  v.  Vrooman,  123  O.  G.  2975  (1906)   76 

Anderson  v.  Nilson,  105  O.  G.  2059  (1903)   50 

Andrews  v.  Nilson,  111  O.  G.  1038 194 

Andrews  v.  Nilson,  123  0.  G.  1667   (1906);    27  App.  D.  C. 

451   24,  96 

Appert  V.  Brownsville  Co.,  144  Fed.  115  147 

Atherton  v.  Cheney,  111  O.  G.  1040 78 

Atkins  V.  Paul,  94  O.  G.  1785 ;    1901  C.  D.  35 48 

Auerbach  v.  Wiswell,  108  O.  G.  289 74 

Aufiero  v.  Monnot,  242  O.  G.  750;    46  App.  D.  C.  297 157 

Automatic   Backing  Machine  Co.  v.  White  Eacker  Co.,  145 

Fed.  643   242 

Babcock  v.  Pickard,  21  Gour.  85-13  (Nov.,  1909)   89 

Badger  v.  Morgan,  117  O.  G.  598  (1905)   191b,  196 

Bailey  v.  Davis,  102  O.  G.  819  (1903)    .39 

Ball  V.  Flora,  117  O.  G.  2088  (1905)    216,  243 

Barber  v.  Wood,  127  O.  G.  1991  (1907)    154a,  256 

Barber  v.  Wood,  128  O.  G.  2835  (1907)   89 

Barber  v.  Wood,  132  O.  G.  1588  244 

Barber  v.  Ti-ansue,  19  Gour.  34-6   25 

Barkley  v.  Schuler,  199  O.  G.  309 ;    41  App.  D.  C.  250 142 

Barnes  v.  Swartwout,  161  O.  G.  1045  (1910)    188 

V 


Section 

Barr  v.  Bugg,  122  O.  G.  2061  (1906)   ". .  89 

Barratt  v.  Swingelhurst,  144  0.  G.  818  (1909)   84 

Basch  V.  Hammond,  15  Gour.  34-4  (May,  1903)    48 

Basch  V.  Hammond,  113  O.  G.  55]    140 

Bauer  v.  Crone,  118  O.  G.  1071 158 

Bay  State  Belting  Co.  v.  Kelton  Bruce  Co.,  127  O.  G.  1580  170,  196 

Beal  V.  Shuman,  120  O.  G.  655  (1905)   161 

Beall  V.  Lyon,  127  O.  G.  3215  (1907)   198 

Bechman  v.  Wood,  89  0.  G.  2462 242 

Bechman  v.  Southgate,  127  O.  G.  1254  (1906)  ;    28  App.  D. 

C.  405   247 

Bechman  v.  Wood,  15  App.  D.  C.  484 3 

Becker  v.  Currier,  104  O.  G.  2439  (1903)   47 

Becker  v.  Otis,  127  O.  G.  1267 56,  57 

Beckert  v.  Currier,  104  O.  G.  2439  (1903)    216 

Beedle  v.  Bennet,  122  U.  S.  77 ;    30  L.  Ed.  1074 106 

Bell  V.  Brooks,  1881  C.  D.  8 136 

Bethlehem  Steel  Co.  v.  Niles,  160  Fed.  880 154 

Bettendorf,  17  Gour.  41-22  (May,  1905) .  217 

Bijur  V.  Eushmore,  246  O.  G.  301 ;    46  App.  D.  C.  395 . .  30 

Blackman  v.  Alexander,  98  O.  G.  1281;    1902  C.  D.  41 195 

Blackman  v.  Alexander,  100  O.  G.  2383 ;    1902  C.  D.  323 220 

Blackman  v.  Alexander,  104  O.  G.  2441  (1903)    218 

Blackman  v.  Alexander,  105  O.  G.  2059  (1903)   209,  226,  227 

Blackman  v.  Alexander,  113  0.  G.  1703;    26  App.  D.  C.  541; 

121  O.  G.  1979   180 

Blackford  v.  Wilder,  104  O.  G.  578  (1903)  ;    21  App.  D.  C.  1 

133,  251 

Blackford  v.  Wilder,  127  O.  G.  1255;    28  App.  D.  C.  535  .  .229,  232 

Blease  v.  Garlington,  92  U.  S.  1 197 

Bliss  V.  McElroy,  122  O.  G.  2687  (19U6)   156 

Bliss  V.  Cneverling,  112  O.  G.  499   50 

Bliss  V.  Thompson,  20  Gour.  19-8  (March,  1908)    142 

Bodwitch  V.  Todd,  98  O.  G.  792;    1902  C.  U.  27 71,  87 

Bonsall  v.  Gilmore,  16  Gour.  82-3   48 

Booth  V.  Hanan,  123  O.  G.  319  (1906)   87 

Borg  V.  Strauss,  130  O.  G.  2719  (1907)   48 

Bourn  v.  Hill,  123  O.  G.  1284  (1906)  ;    27  App.  D.  C.  291  .  .  250 

Bowen  v.  Bradley,  58  O.  G.  386 217 

Bradley  v.  Midgett,  150  O.  G.  1042;    1910  C.  D.  24 48 

Bradley  V.  Miggctt,  179  O.  G.  1108  (1911)    120,136 

Brakoy,  156  O.  G.  797  (1910)    13 

Brannstein  v.  Holmes,  133  O.  G.  1937   (1908)    164 

Braucht  v.  Murdock,  13  Gour.  66 13 

vi 


Section 

Brami  v.  Wahl,  228  O.  G.  1458;    45  App.  D.  C.  291 110 

Breuing  v.  Ridgely,  19  Gour.  65-2  (Aug.  5,  1907)    50 

Breiiizcr  v.  Eobinson,  166  O.  G.  1281  (1911 )   16S 

Briggs  V.  Lillic,  116  O.  G.  871  (1904)   34,  113,  125 

Brill  V.  Uebelachor,  99  O.  G.  2966;    1902  C.  D.  220 23,  192 

Broadwell  v.  Long,  164  O.  G.  252;   36  App.  D.  C.  418  154a,  221,  247 

Brooks  V.  Hillard,  106  O.  G.  1237  (1903)    102 

Brooks  V.  Hillard,  111  0.  G.  302;    23  App.  D.  0.  526 247 

Brooks  V.  Smith,  110  O.  G.  2013 156 

Brooks  V.  Foote,  108  0.  G.  287 59 

Broiigh  V.  Snyder,  94  0.  G.  221 ;    1901  C.  D.  3 241 

Brown  v.  Lindmark,  109  0.  G.  1071   245 

Brown  v.  Stroud,  122  O.  G.  2688   21,  165 

Brown  v.  Hill,  123  0.  G.  1284;    27  App.  D.  C.  291 28 

Brown  v.  Keeney,  105  O.  G.  260  (1903)   47 

Brown  v.  Cutler,  104  O.  G.  1896   47 

Brown  v.  Blood,  105  O.  G.  976  (1903)    157 

Brown  v.  Campbell,  201  O.  G.  905;   41  App.  D.  C.  499 157 

Brown  v.  Gillett,  191  O.  G.  832  (1913)    240 

Brown  v.  Gammeter,  132  O.  G.  679  (1908)   255 

Brown  v.  Inwood,  131  O.  G.  1423   (1907)    256 

Brown  v.  Dyson,  188  O.  G.  809;    39  App.  D.  C.  415 46 

Brungger  v.  Smith,  49  Fed.  124 171,  173 

Biyce  Bros.  Co.  v.  Seneca  Glass  Co.,  140  Fed.  161 166 

Bundy  v.  Rumbarger,  92  0.  G.  2001 92 

Bundy  v.  Eumbarger,  92  O.  G.  2002 98 

Burleigh  v.  Elliott,  197  O.  G.  240  (1913)    66 

Burson  v.  Vogel,  125  0.  G.  2361   (1906)   103 

Burson  v.  Vogel,  131  O.  G.  942  (1907)  ;    29  App.  D.  C.  388  . 

134, 167,  247 

Butterworth  v.  Boral,  13  Gour.  2-1  (Jan.,  1901)    49 

Byron  v.  Henry,  104  O.  G.  1895  (1903)   244 

Byron  v.  Maxwell,  105  O.  G.  499  (1903)    256 

Cain  V.  Park,  86  O.  G.  797 ;    14  App.  D.  C.  42 92,  94,  95 

Campbell  v.  Dyson,  242  O.  G.  253   (1916)    87 

Capen,  In  re,  214  O.  G.  685;   45  App.  D.  C.  342 52 

Card  V.  Card,  112  O.  G.  499  (1904)    13 

Carlin  v.  Goldberg,  236  O.  G.  1222;   1917  C.  D.  128;  45  App. 

D.  C.  540   87,  246 

Carroll'v.  Stahlberg,  111  O.  G.  1937  49 

Carroll  v.  Halwood,  135  O.  G.  896;   31  App.  D.  C.  165 232,  248 

Carv-alho,  250  O.  G.  514 ;    47  App.  D.  C.  584 247 

Cazin  v.  Von  Welshback,  lvI9  0.  G.  650   (1905)    201 

vii 


Section 

Cazin,  20  Gour.  86-15  (Dec.,  1908)   255 

Cedge  V.  Cromwell,  19  App.  D.  C.  198 164 

Chambers  v.  Frost.  170  O.  G.  244;    37  App.  D.  C.  332 141 

Chapman  v.  Wintroath,  —  U.  C.  64  L.  Ed.  — 185 

Charmichael  v.  Fox,  104  O.  G.  1656 215,  219 

Charlton  v.  Sheldon,  111  O.  G.  2492 40 

Cherner  v.  Qauss,  116  O.  G.  597  (1905)  ;    25  App.  D.  C.  15  .  97 

Chisholm  v.  Pierman,  225  O.  G.  1105  (1915)    157 

Christensen  v.  Ellis,  94  O.  G.  2-561;    1902  C.  D.  326;    17  App. 

D.  C.  498   106, 121 

Christensen  v.  ilcKenzie,  117  O.  G.  277   (1905)    244 

Christie  v.  Seybold,  55  Fed.  69   110 

Churchill  v.  Goodwin.  141  0.  G.  568;    32  App.  D.  C.  428  ...        247 

Churchward  v.  Douglas,  106  O.  G.  2016  (1903)   59 

Clark  Thread  Co.  v.  WiUimantic  Linen  Co.,  140  V.  S.  489,  35 

L.  Ed.  521   101 

Qaussen  v.  Dunbar,  129  O.  G.  2499  (1907)   216 

Clement  v.  Kichards,  111  O.  G.  1626 210,  217,  252 

Clement  v.  Eichards,  113  O.  G.  1143 113,  115 

Qement  v.  Eichards,  16  Gour.  52-10 227 

Clement  v.  Brown,  126  O.  G.  2189  (1907)    70,  71 

Clement  v.  Browne,  126  O.  G.  2589  (1907)   165 

aow  V.  Baker,  36  Fed.  692 198 

Cobb  V.  Goebel,  108  O.  G.  1591;    23  App.  D.  C.  75 102 

Colburn  t.  Hitchcock,  145  O.  G.  1022  (1909)   78 

Coleman  v.  Bullard,  114  O.  G.  973   256 

Cole  T.  Zarbock,  116  O.  G.  1451 215 

Collom  T.  Thurman,  131  O.  G.  839 30 

Columbia  etc.  Co.  v.  Duerr  &  Co.,  184  Fed.  9S3 156 

Columbian  Carbide  Co.,  20  Gour.  17-1  (Mar.  27,  1908)   200 

Connor  v.  Dean.  142  O.  G.  856;    24  App.  D.  C.  277 191 

Continental  Eubber  Works  v.  Single  Tube  Co.,  178  Fed.  452       lOS 

Cooke  V.  Taylor,  116  O.  G.  1181  (1904)   105 

Cooper  V.  Downing,  222  O.  G.  727  (1915)   191a 

Cooper  V.  Downing,  230  O.  G.  909;   45  App.  D.  C.  345 191a 

Corey  v.  Blakey,  115  O.  G.  1328  (1905)  89,  244 

t.^rey  v.  Trout,  99  O.  G.  2547 ;    1902  C.  D.  195 15 

Corey  v.  Trout,  110  O.  G.  306 230 

Corry  et  al.  v.  McDermott,  117  O.  G.  279;    25  App.  D.  C.  305       164 

Cosper  V.  Gold,  151  O.  G.  194;   34  App.  D.  C.  194 87,  246,  247 

Couch  V.  Bamett,  110  O.  G.  1431  141 

Coulson  V.  Callender,  101  O.  G.  1607 77 

Courson  v.  O 'Conner,  181  O.  G.  544;    38  App.  D.  C.  131  ...       120 

Cobb  V.  Goebel,  108  O.  G.  1591 ;    23  App.  D.  C.  75 102 

viii 


Section 

Cragg  V.  Strickland,  250  O.  G.  255   121 

Cramer  v.  Carrier,  177  O.  G.  769   (1912)    46,  49 

Crane,  Ex  parte,  106  0.  G.  999   7 

Crescent  Oil  Co.  v.  W.  C.  Eobinson  &  Sons,  142  O.  G.  1113 

(1909)     216 

Creveling  v.  Jepson,  256  O.  G.  226;    47  App.  D.  C.  597  ....  33 

Creveling  v.  Jepson,  226  O.  G.  339 ;    44  App.  D.  C.  445 142 

Cross  V.  Phillips,  87  O.  G.  1399;    14  App.  D.  C.  288   100 

Cross  V.  Phillips,  14  App.  D.  C.  228   46 

Cross  V.  Busby,  204  O.  G.  1347 ;    42  App.  D.  C.  227 229 

Cummings  v.  McKenzie,  110  O.  G.  1167   134 

Curtiss,  In  re,  238  O.  G.  650;    46  App.  D.  C.  183 228 

Curtis  V.  Lindmark,  171  O.  G.  484  and  215;    37  App.  D.  C. 

322   92 

Curtis  V.  de  Ferranti,  171  O.  G.  215  28 

Curtain  Supply  Co.  v.  National  Lock  Washer  Co.,  178  Fed. 

95 .  .156,  157 

Cutler  V.  Hall,  135  O.  G.  449  (1908)   218 

Cutler  V.  Leonard,  31  App.  D.  C.  297;    136  0.  G.  438 96 

Daggett  V.  Kaufmann,  145  O.  G.  1024 ;   33  App.  D.  C.  450  .  141, 149 

Dalgren  v.  Crocker,  98  O.  G.  2586 ;    1902  C.  D.  107 48 

Dalton  V.  Hopkins,  121  O.  G.  2666  (1906)    244 

Dalton  V.  Wilson,  224  O.  G.  741;    44  App.  D.  C.  249 192 

Dashiell  v.  Tasker,  103  O.  G.  2147;    21  App.  D.  C.  64;    102 

O.  G.  1551   142 

Davis  V.  Ocumpaugh,  104  O.  G.  2440   (1903)    36,  49 

Davis  V.  Zellers,  167  O.  G.  513  (1911)   55 

Davis  V.  Swift,  96  O.  G.  2409;    1901  C.  D.  134 89 

Davis  V.  Horton,  136  O.  G.  1768  121 

Davis  V,  Garrett,  123  0.  G.  1991   (1906)    121 

Davis  V.  Forsythe,  87  O.  G.  516 157 

Davis  V.  National  Steam  Specialty  Co.,  164  Fed.  191 123 

Davis  V,  Cody,  101  O.  G.  1369;    1902  C.  D.  220 244 

Day  V.  Adt,  et  al.,  125  O.  G.  2765  (1906)   49 

Degen  v.  Pfadt,  133  O.  G.  514  (1908)    256 

DeKando  v.  Armstrong,  169  O.  G.  1185;   37  App.  D.  C.  314  102, 136 

Denton  v.  Burnhain,  18  Gour.  83-11  (Nov.,  1906)    195 

De  Ferranti  v.  Lindmark,  183  O.  G.  782   (1912)    SO 

De  Ferranti  v.  Lindmark,  137  0.  G.  733   (1908);    32  App. 

D-  C 217 

Derr  v.  Gleason,  264  0.  G.  864  249 

Dickinson  v.  Hildreth,  122  O.  G.  1397  (1906)    87 

Dinkel  v.  D 'Oliver,  113  0.  G.  2507  (1903)    76 

ix 


Section 

Dittgen  v.  Eaeine  Paper  Goods  Co.,  181  Fed.  394 167 

Dittgen  v.  Parmenter,  99  0.  G.  2966;    1902  C.  D.  218 87 

Dixon  V.  Graves,  130  O.  G.  2374  (1907)    254 

Dixon  V.  McElroy,  127  O.  G.  2393  (1907)   50 

Dixon  V.  Graves,  127  O.  G.  1993  80 

Dunbar  v.  Schellengers,  125  O.  G.  348   (1906)    103, 121 

Doble  V.  Henry,  110  O.  G.  604 41 

Doble  V.  Henry,  118  O.  G.  2249  (1905)   158, 168 

Donning  v.  Anderson,  111  O.  G.  582 244 

Donning  v.  Stackpole,  106  O.  G.  264;    1903  C.  D.  298 193a 

Donning  v.  Fisher,  125  O.  G.  2765  (1906)    213 

Donnelly  v.  Wyman,  103  O.  G.  657  (1903)    116 

Dorr  V.  Ames,  15  Gour.  35-6  (June,  1903)    89 

Double  V.  Mills,  112  O.  G.  1747   143,  154 

Dow  V.  Benson,  107  O.  G.  1378  (1903)    14,  15 

Drawbaugh,  In  re,  77  O.  G.  313;    9  App.  D.  C.  219;    1896  C. 

D.  527   243 

Dreckscliniidt  v.  Scliaefer,  246  O.  G.  301 157 

Dudley  v.  Blickinsderfer,  99  O.  G.  228;    1902  C.  D.  119  ...        216 

Duker,  115  O.  G.  803   7 

Dukesmith  v.  Covington,  126  O.  G.  348   74 

Dukesmith  v.  Carrington,  125  O.  G.  348   (1906)    208,  256 

Dunlap  V.  Creveling,  21  Gour.  67-8  (Sept.,  1909)   63 

Dunlap  V.  Creveling,  160  O.  G.  774  (1910)   199 

Dunbar  v.  Schellenger,  128  O.  G.  2837  (1907);    29  App.  D. 

C.  129   247 

Dunbar  v.  Schellenger,  118  O.  G.  2536  (1905)   212 

Dunbar  v.  Schellenger,  19  Gour.  37-17  (April,  1907)    217 

Dunbar  v.  Schellenger,  121  O.  G.  687  (3905)   224 

Dunkcr  v.  Eeist,  119  O.  G.  1925  (1905)    66,  78 

Dunkley  v.  Beekhuis,  158  O.  G.  886  (1910)   200 

Dunn  v.  Holiday,  119  O.  G.  1261  (1905)   47 

Dunn  v.  Douglass,  184  O.  G.  804  (1912)    89 

Duryea  v.  Kice,  126  O.  G.  1357  (1906) ;    28  App.  D.  C.  423  .        247 

Dutcher  v.  Matthew,  118  O.  G.  2538  (1905)   239 

Dyson  v.  Land,  130  O.  G.  1690  (1907)    194 

Dyson  v.  Land,  ]33  O.  G.  1679  (1908)   21 

Earll  V.  Love,  140  0.  G.  1209  (1909)   78 

Eastern  Paper  Bag  Co.  v.  Continental  Paper  Bag  Co.,  142 

Fed.  479 108 

Eastman  v.  Houston,  95  O.  G.  2064;  1902  C.  D.  386;  18 

App.  D.  C.  135  102 

Ebersole  v.  Durkin,  132  O.  G.  842  (1907)    142,  150 

X 


Section 

Eggbert  v.  Lippman,  104  U.  S.  333  .  . 166 

Egly  V.  Sc-hiiltze,  117  0.  G.  27G  (1905)   69,  244 

Eichelbergcr  v.  Dillon,  129  O.  G.  3161 13 

Elizabeth  v.  American  etc.  Co.,  97  U.  S.  135 166 

Ellis  V.  Boyce,  195  O.  G.  273   (1913)    84 

Elsom  V.  Bonner,  246  O.  G.  299  (1917),  46  App.  D.  C.  230  154a,  247 

Emerson  v.  Sanderson,  174  O.  G.  831  (1911)   142 

Emmet  v.  Fullager,  130  O.  G.  2719  (1907)   89 

Emmet  v.  Fullager,  114  O.  G.  1551  48 

Emmet  v.  Fullager,  124  O.  G.  2178   141, 149 

Engel  V.  Sinclair,  152  O.  G.  489 ;    34  App.  D.  C.  212 28 

EscMnger  v.  Drummond,  121  O.  G.  1348  (1906) 24,  87 

Eshelman  v.  Shantz,  189  0.  G.  1282 ;    39  App.  434 164 

Evans  v.  Associated  etc.  Co.,  241  Fed.  252 06 

Ewing,  Com'r  v.  U.  S.  ex  rel.  Fowler,  238  O.  G.  983,  244 

U.  S.  1   4 

Faller  v.  Lorimer,  16  Gour.  37-11   196 

Faller  v.  Lorimer,  14  Gour.  50-2  (July,  1902)    257 

Fanslow  v.  Whitneys,  266  O.  G.  742  (1910)   236 

Felbel  v.  Oliver,  13  Gour.  4-11  (Jan.,  1901)    195 

Felbel  v.  Oliver,  100  O.  G.  1975 ;    1902  C.  D.  309 197 

Felbel  v.  Fox,  130  O.  G.  2375   (1907)    238 

Felsing  v.  Nelson,  121  0.  G.  1347  (1906)   87 

Fefel  V.  Stocker,  94  O.  G.  434;    17  App.  D.  C.  317 123, 152, 156 

Fend  v.  Miggett,  223  O.  G.  649  (1915)    82,  88 

Feinberg  v.  Cowan,  125  O.  G.  667  (1906) ;    29  App.  D.  C.  80  116 

Fenner  v.  Blake,  134  O.  G.  2244;    30  App.  D.  C.  507 102 

Fenwick  v.  Dixon,  15  Gour.  71-23   (Sept.,  1903)    87 

Ferris,  114  O.  G.  541 88 

Fessendon  v.  Potter,  101  0.  G.  2823 ;    1902  C.  D.  466 212 

Fessenden  v.  Pierce,  21  Gour.  21-11   (INforcli,  1909)    130 

Field,  ex  parte,  130  O.  G.  1687  (1906)   224 

Field  V.  Coleman,  131  O.  G.  1686  (1907)   76,  23S 

Field  V.  Coleman,  193  O.  G.  221;    40  App.  D.  C.  598 247a 

Finch  V.  Singleton,  98  O.  G.  1709;    1902  C.  D.  61 68 

Flather  v.  Weber,  104  O.  G.  312  (1903)  ;    21  App.  D.  C.  179  189 

Flora  V.  Powrie,  109  O.  G.  2443 ;    23  App.  D.  C.  195 249 

Floyd  V.  Eohlfiug,  133  O.  G.  992  (1908)    50 

Fordyce  v.  Taisey,  102  O.  G.  831  (1903)   50 

Forsyth  v.  Richards,  115  O.  G.  1327 43,  84 

Forsberg  v.  Bradbury,  177  O.  G.  239  (1912)    51 

Foster  v.  Antisdel,  88  O.  G.  1527;    14  App.  D.  C.  552 158 

Fowler  v.  Boyce,  118  0.  G.  2534  (1905)  ;    27  App.  D.  C.  55; 

122  O.  G.  1726  (1906)  ;    121  O.  G.  1014 100 


Section 

Fowler  v.  Boyee,  107  0.  G.  543  (1903)  40,  4S 

Fowler  v.  Boyce,  108  O.  G.  561 47,  48 

Fowler  v.  McBertv,  121  O.  G.  1015  (1906)    100 

Foote  V.  Wenk,  118  O.  G.  1366  (1905)    143 

Franklin  v.  Cooley,  95  O.  G.  2063 ;    1901  C.  D.  49 48 

Freeman  v.  Garrels,  102  O.  G.  1777  (1903)    103,  104,  131 

Freeman  v.  Parks,  117  O.  G.  276  (1905)    58 

Freistedt  v.  Harold,  116  0.  G.  594  (1905)    47,  48 

French  v.  Holcomb,  110  O.  G.  1727 216,  218 

French  v.  Holcomb,  115  O.  G.  506  (1905)   102,  190 

French  v.  Holcomb,  120  O.  G.  1824  (1905)  ;    26  App.  D.  C. 

307   97,103 

Frickey  v.  Ogden,  199  O.  G.  307   233 

Fullager  v.  Jungren,  114  O.  G.  1550 47 

Fuller  Y.  Hewlett,  17  Gour.  3-6   118 

Funk  V.  Matteson,  100  O.  G.   1563;     1902   0.  D.  297;    20 

App.  D.  C.  285;    1902  C.  D.  553 100, 106, 133, 159 

Funk  V.  Whitely,  117  O.  G.  280  (1905)  ;  25  App.  D.  C.  313  .  154 
Furman  v.  Dean,  114  0.  G.  1552  96,  242 

Gabowsky  v.  Gallaher,  191  0.  G.  835,  39  App.  D.  C.  548  .  .  .108, 10!) 

Gaisman  v.  Gillette,  165  O.  G.  244,  36  App.  D.  C.  440 141, 151 

Gaely  v.  Brand,  16  Gour.  50-4 78 

Gales  V.  Berrigan,  100  O.  G.  232;    1902  C.  D.  232 49 

GaUagher  v.  Hein,  115  0.  G.  1330  (1905)  ;    25  App.  D.  C. 

77   117,  139,  141, 148,  159 

Gallagher  v.  Hein,  114  O.  G.  974 143 

Gallagher  v.  Hastings,  103  O.  G.  1165;    21  App.  D.  C.  88  .  .        180 

Gaily  V.  Burton,  120  O.  G.  325  (1905)   78 

Gammeter  v.  Thropp,  190  O.  G.  266  (1913)    51 

Gammeter  v.  Lister,  253  O.  G.  259 35 

Garrels  v.  Freeman,  103  0.  G.  1683,  21  App.  D.  C.  207 103 

Gassau  v.  Odell,  190  O.  G.  1028  (1913)   16 

Gehring  v.  Barry,  225  0.  G.  371   (1914)    80 

General  Electric  v.  Stcinberger,  208  Fed.  699   102 

General  Electric  v.  Steinberger,  206  O.  G.  1161,  214  Fed.  781  28 
Ghallenberger  v.  Andrews,  100  0.  G.  3013;    1902  C.  D.  346  .  89 

Gibbons  v.  Poller,  124  O.  G.  624  (1906)   116, 184 

Gibbons  v.  Peller,  127  O.  G.  3643  (1907)    88 

Gilbert  v.  Gilbert,  160  O.  G.  775  (1910)    16 

Gilbert-Stringer  v.  Johnson,  102  O.  G.  621;    1903  C.  D.  20  .   76,95 

Gillespie  v.  Dean,  15  Gour.  83-7  (Nov.,  1903)    78 

Gilman  v.  Hinson,  118  O.  G.  1933  (1905)   143 

xii 


Section 

Gilman  v.  Hinsoii,  201  O.  G.  1219   (1913)    156 

Gilman  v.  Hinsoii,  122  O.  G.  731,  26  App.  D.  C.  409 156 

Giveiis  V.  Warren,  216  O.  G.  1013,  44  App.  D.  C.  10 110 

Gold  V.  Gold,  131  O.  G.  1422  (1907)   244 

Gold  V.  Gold,  150  O.  G.  570,  34  App.  D.  C.  229 81,  234,  249 

Gold  V.  Dixon,  194  O.  G.  1142;    1913  C.  D.  217 75,  78 

Goldberg  v.  Halle,  151  O.  G.  452,  34  App.  D.  C.  183 251 

Goldschmidt  v.  Von  Schutz,  192  0.  G.  743  (1913)   195 

Goldschmidt  v.  Von  Schntz,  192  O.  G.  743  (1913)    193 

Goodfellow  V.  Jolly,  111  0.  G.  1940 18,  194a 

Goodfellow  V.  Jolly,  115  O.  G.  1064 22,  244 

Gordon  v.  Wentworth,  130  O.  G.  2065  (1907)   151 

Gordon  v.  Wentworth,  135  O.  G.  1125,  31  App.  D.  C.  150  . .  156,  157 

Graham  v.  Langhaar,  164  0.  G.  739  (1911)    89 

Graham  v.  Langhaar,  177  0.  G.  240  (1912)    83 

Granger  v.  Eichardson,  110  O.  G.  722 190 

Green  v.  Farley,  132  O.  G.  235   (1907)    50 

Greenawalt  v.  Mark,  111  O.  G.  2224  92 

Greenwood  v.  Dover,  108  O.  G.  2143;    1904  C.  D.  66 154 

Greenwood  v.  Dover,  109  O.  G.  2172,  23  App.  D.  C.  251  .  .  .247,  251 

Greuter  v.  Matthieu,  111  O.  G.  582   218 

Greuter  v.  Matthieu,  112  O.  G.  253   226 

Griffith  V.  Dodgson,  116  O.  G.  1731  (1905)   81,  257 

Gueniffet  v.  Wictorsohn,  134  O.  G.  255,  134  O.  G.  779,  30 

App.   D.   C.   432    234,  247 

Guett  V.  Trengoniug,  114  0.  G.  544  37 

Hadley  v.  Ellis,  265  O.  G.  458  (1919)  ;    258  Fed.  984 141 

Hall  V.  Alvord,  101  O.  G.  1833 ;    1902  C.  D.  418 194 

Halwood  V.  Lalor,  103  O.  G.  887  (1903)  ;    21  App.  D.  C.  61  .  134 

Halwood  V.  McCormick,  16  Gonr.  84-9    42,  78 

Hamilton  v.  Carroll,  110  O.  G.  2510   47 

Hamilton  v.  Ide  et  al.,  14  Gour.  4-9  (Feb.,  1902)    49 

Hamilton  v.  Holiday,  119  O.  G.  1261  (1905)    47 

Hammond  v.  Hart,  83  O.  G.  743    7,  12 

Hammond  v.  Basch,  115  O.  G.  804,  24  App.  D.  C.  469 

46, 100, 119, 139 

Hanan  v.  Marshall,  21  Gour.  54-16  (June,  1909)   56 

Hansel  v.  Wardwell,  116  O.  G.  2008  (1905)   205 

Hansen,  117  O.  G.  2632  (1905)   21 

Hansen!  v.  Dean,  129  O.  G.  483  (1907)  ;    29  App.  D.  C.  112  185 

Harnish  v.  Gueniffet,  117  O.  G.  1492  (1905)    204 

Harris  v.  Stern,  105  O.  G.  259  (1903)    132 

Harris  v.  Stern,  101  0.  G.  1132;    1902  C.  D.  386 218 

2  xiii 


Section 
Barter  v.  Barrett,  114  O.  G.  975,  24  App.  D.  C.  300  .  .  .102, 104,  185 

Hartley  v.  Mills,  110  O.  G.  604 41 

Hathaway  v.  Field,  261  O.  G.  413  (1919)   138, 157 

Haskell  v.  Miner,  109  O.  G.  2710  10 

Hathaway  v.  Colman,  245  O.  G.  1025,  46  App.  D.  C.  40 247 

Haudenschild  v.  Huyek,,  164  O.  G.  515  (1911)   13 

Havemeyer  v.  Coryell,  186  O.  G.  558   (1912)    154a 

Hawkins  v.  Young,  21  Gour.  34-3  (May,  1909)    78 

Hein  v.  Bnhonp,  81  0.  G.  2088   133 

Heintish  v.  Congdon,  106  O.  G.  542  (1903)    '.  .  .  48 

Hellmund,  141  O.  G.  565  (1909)    13 

Hendler  v.  Graf,  96  O.  G.  2063 ;    1901  C.  D.  130   132 

Henderson  v.  Gilpin,  186  O.  G.  289   (1911)  ;    39  App.  D.  C. 

428,  187  O.  G.  231  109,  144 

Henderson  v.  Kindervater,  192  O.  G.  741  170 

Henderson  v.  Noakes,  59  O.  G.  1431;    1892  C.  D.  114 50 

Henggi  v.  Dalhneyer,  253  O.  G.  514 102 

Herman  v.  Fi:llman,  107  O.  G.  1094 " 158 

Herman  v.  Fullman,  109  O.  G.  1888,  23  App.  D.  C.  259  ...  100,  247 

Hermsdorf  v.  Driggs,  133  O.  G.  1189   (1908)   87 

Herreshoff  v.  Knietsch,  111  O.  G.  1624  227 

Hett  V.  Swinnerton,  181  O.  G.  542  (1911)    144 

Hewitt  \.  Weintraub,  128  O.  G.  1689  (1907)   224 

Hewitt  V.  Weintranb,  134  O.  G.  1561  (1908)    198 

Hewitt  V.  Thomas,  122  O.  G.  1045   215,  256 

Hewitt  V.  Steinmetz,  122  O.  G.  1396  (1906)    226 

Hewlett  V.  Steinberger,  190  O.  G.  270,  40  App.  D.  C.  287  .  .        162 

Heyne  v.  De  A'ilbiss,  125  O.  G.  669  (1906)    21,  66,  84 

Hieks  V.  Costello,  103  O.  G.  1163  (1903)   62 

Hildreth,  97  O.  G.  1374;    1901  C.  D.  186 208 

Hillard  v.  Fisher,  101  O.  G.  2290;    1902  C.  D.  448 61 

Hillard  v.  Eckert,  101  O.  G.  1831 ;    1902  C.  D.  413 256 

Hilliard  v.  Brooks,  111  O.  G.  302,  23  App.  D.  C.  526 156 

Hilliard  v.  Hewlett,  19  Gour.  55-10  (Apr.,  1907)    67 

Hinkley  v.  Baker,  97  O.  G.  2742 ;    1901  C.  D.  236 66 

Hofk  V.  Hopkins,  21  Gour.  67   (Aug.,  1909)    47,  48 

Hocker  v.  Farr,  193  O.  G.  220  (1913)   49 

Hoogh  V.  Gordon,  108  O.  G.  797   223 

Holland,  99  O.  G.  2548 ;    1902  (J.  D.  199   7 

Hollifield  V.  Cummings,  154  O.  G.  1107  (1910)   62 

Iloltz  V.  Hewitt,  127  O.  G.  1992  (1907)   201 

Hope  Jr.  V.  Voigt,  115  O.  G.  1585   (1905);    25  App.  D.  C. 

22   102,  134,  139, 186 

Uopfeit  V.  Head,  100  ().  fi.  767   (1903)    66 

xiv 


Section 
Hopkins  v.  Newman,  134  0.  G.  2028,  30  App.  D.  C.  402   .  .     191a 

Iloi.kins  V.  Newman,  131  O.  G.  1161  (1907)    228 

Hopkins  V.  Peters,  199  O.  G.  1243   (1907);    41  App.  D.  C. 

302   150 

Horine  v.  Wende,  1907  C.  D.  615,  29  App.  D.  C.  415  .  .229,  232,  248 
Horton  v.  Zimnier,  137  0.  G.  2223   (1908);    32  App.  D.  C. 

217   150,  201 

Horton  v.  Leonard,  155  O.  G.  305 89 

Hough  V.  Gordon,  108  O.  G.  797  212 

Howard  v.  Spare,  21  Gour.  19-8  (IMJar.,  1909)   193a 

Howard  v.   Bowes,  137   O.  G.   733    (1908);    31  App.   D.  C. 

619   140,  157 

Howard  v.  Hey,  95  O.  G.  1647,  18  App.  D.  C.  142 249 

Howell  V.  Hess,  132  O.  G.  1074  (1907)  ;    30  App.  D.  C.  194  .        138 

Howell  V.  Hess,  122  O.  G.  2393  (1906)    138 

Hoyt  V.  Sanders,  119  0.  G.  1260  (1905)   48 

Huber  v.  Aiken,  88  O.  G.  1525 80 

Huebel  v.  Bernard,  90  O.  G.  751,  15  App.  D.  C.  510 164,  192 

Huff  V.  Gulick,  179  O.  G.  579,  38  App.  D.  C.  334 143,  181 

Huff  V.  Gulick,  177  O.  G.  525 141 

Hull  V.  McGill,  117  0.  G.  597   218 

Hunter  v.  Stikenian,  13  App.  D.  C.  214,  85  O.  G.  16 138 

Hubbard  v.  Berg,  195  O.  G.  818,  40  App.  D.  C.  577 122,  157 

Independent  Baking  Powder  Co.  v.  Fidelity  Mfg.  Co.,  94  0. 

G.  222 ;    1901  C.  D.  7 [ 195 

International  Tooth  Crown  Co.  v.  Gaylord,  140  U.  S.  63,  35 

L.  Ed.  347   166 

Jackson  v.  Patten,  150  O.  G.  265   8,  14 

Jackson  v.  Weber,  18  Gour.  84-13  (Nov.,  1906)   73 

Jameson  &  Yeserba  v.  Ellsworth,  192  O.  G.  218,  40  App.  D. 

C.  164  164 

Jarvis  v.  Quiney,  113  O.  G.  550 89 

Jarvis  v.  Focatiis,  20  Gour.  66-4  (March,  1908)    238 

Jenner  v.  Dickinson,  116  O.  G.  1181   (1904)    156 

Jenner  v.  Dickinson,  117  O.  G.  600   (1905)    102 

Jobski  V.  Johnson,  247  O.  G.  479,  47  App.  D.  C.  230 142,  154 

Joliffe  V.  Waldo,  234  O.  G.  671  (1916)    '236 

Johnson  v.  Erekson,  131  O.  G.'  "2419   (1907)    48 

Johnson  v.  Mueser,  145  O.  G.  764,  29  App.  D.  C.  61 80 

Jones  V.  Cooke,  117  O.  G.  1493  (1905)  ;    25  App.  D.  C.  524  .  121 

Jones  V.  Hulse,  21  Gour.  86-15  (July,  1909)   70 

Jones  V.  Linn,  110  O.  G.  1430   48 

XV 


Section 

Joues  V.  Starr,  111  O.  G.  2221 194a 

Jones  V.  Starr,  1905  C.  D.  694,  25  App.  D  C.  529 194a 

Jones  V.  Starr,  117  O.  G.  1495,  26  App.  D.  C.  64 251 

Jones  V.  Wplff,  17  Gour.  53-8  (July,  1905)    113 

Jones  V.  Wolff,  17  Gour.  52-8   30 

Juuge  V.  Harrington,  131  O.  G.  691 ^ 25,  26 

Kaezauder  v.  Hodges,  118  O.  G.  836 65 

Karpenstein  v.  Hertzberg,  127  O.  G.  2393  (1907)    46 

Keeeh  v.  Birmingham,  191  0.  G.  2825   39 

Keeler  v.  Bailey,  14  Gour.  82-1   (Dec,  1902)    .' .  . .  21 

Keith  V.  George,  16  Gour.  19-4 89 

Keith  V.  Lundquist,  128  O.  G.  2835  (1907)    256 

Keith  V.  Lundquist,  156  O.  G.  798  (1910)   196 

Keith  V.  Eriekson,  157  O.  G.  754  (1910)    194 

Kellogg  V.  International  Co.,  158  Fed.  104,  171  Fed.  651  ...  122 

Kelly  V.  Dempster,  164  O.  G.  975  (1911)   81 

Kelly  V.  Park,  81  O.  G.  1931  170 

Kempshall  v.  Eoyce,  129  O.  G.  3162  194 

Kempshall  v.  Seiberling,  104  O.  G.  1395  (1903)   257 

Kendall  v.  Winsor,  21  Howe  322   157 

Kenney  v.  O'Connell,  117  O.  G.  1163  (1905)    19S 

Kent  V.  Wilson,  137  0.  G.  1943  50 

Keyes  v.  Yunek,  182  0.  G.  248  (1912)   66,  89 

Kilbourn  v.  Hiner,  124  0.  G.  1841  (1906)    114 

I^nball  V.  Sharpies,  21  Gour.  68-10  (Aug.,  1909)    55 

King  V.  Hansen,  101  O.  G.  1129;    1902  C.  D.  378 48 

Kinney  v.  Goodhue,  123  O.  G.  1663  (1906)   87 

Kinsman  v.  Strohm,  136  O.  G.  1769  (1908)  ;    31  App.  D.  C. 

581   192,  247 

Kinsman  v.  Strohm,  125  O.  G.  1699  (1906)   193, 195 

Kirby  v.  Clements,  216  0.  G.  1319,  44  App.  D.  C.  12 25 

Kirkegaard  v.  Ries,  125  O.  G.  1700  (1906)   102,  103 

Klahn,  In  re,  241  O.  G.  623 ;     1917  C.  D.  7   233 

Klcnk  V.  Kruse,  177  0.  G.  1300  (1912)    46 

Klocke  V.  Burk,  189  O.  G.  779;    1913  0.  D.  85 37,  44 

Klopetke  v.  Becker,  120  O.  G.  658  (1905)   60 

Kncisly  v.  Kaisling,  174  O.  G.  830   (1911)    16S 

Koib  V.  Hemingway,  122  O.  G.  1397  (1906)    8!) 

Kroag  V.  Green,  124  O.  G.  1208  (1906)    159 

Krcag  V.  (ireen,  127  O.  G.  1581    (1906)    164 

Kurts  V.  .lackson,  9S  ().  G.  2568;    1902  C.  D.  106 67 

Laas  V.  Scott,  161  Fed.  122 108,  141,  142,  155 

Laas  V.  Scott,  122  O.  G.  352  (1905)   117, 128 

xvi 


Section 

Lacroix  v.  Tyberg,  148  O.  G.  831   (1908)    254 

Lacroix  v.  Tyberg,  150  O.  G.  267,  33  App.  D.  C.  580  ....  247,  247a 

Lacloff  V.  Dempster,  166  O.  G.  511,  36  App.  D.  C.  520 164 

Lammers  v.  Weinwurm,  15  Gour.  66-2  (Sept.,  1903)    257 

Landa  v.  Kavle,  158  0.  G.  228  (1910)   141 

Larkin  v.  Eichardson,  122  O.  G.  2390   184 

Larkiii  v.  Eieliardson,  127  0.  G.  2394  (1906)    164 

Latshaw  v.  Duff,  130  0.  G.  980  (1907)    216 

Lautenschlager  v.  Glass,  249  O.  G.  1223,  47  App.  D.  C.  443  .        247 

Lawrence  v.  Voiglit,  147  O.  G.  235  (1909)    156 

Lederer  v.  Walker,  182  0.  G.  511  157 

Lloyd  V.  Antisdel,  95  O.  G.  1645;    1901  C.  D.  371 185 

Lemp  V.  Mudge,  114  O.  G.  763,  24  App.  D.  C.  282 156 

Lemp  V.  Eandall,  123  O.  G.  349 27 

Lemp  V.  Eandall,  146  O.  G.  255,  35  App.  D.  C.  430 192 

Leonard  v.  Horton,  189  O.  G.  781,  40  App.  D.  C.  22 26 

Leonard  v.  Pardee,  164  O.  G.  249  (1911)    154a,  256 

Libby  v.  Farmer,  18  Gour.  37-14  (May,  1906)    164 

Liberman  v.  Williams,  109  O.  G.  1610,  23  App.  D.  C.  223  ...        114 
Lindemeyer  v.  Hoffman,  95  0.  G.  838   (1901)  ;    18  App.  D. 

C.  1 135,  141 

Lindmark  v.  De  Ferranti,  153  O.  G.  1082,  34  App.  D.  C.  445  .        238 
Lindmark  v.  Hodgkinson,  137  O.  G.  228,  31  App.  D.  C.  612.  .         32 

Lindstrom  v.  Lipschutz,  120  O.  G.  904  (1905)    170, 172 

Lindstrom  v.  Ames,  168  O.  G.  250,  37  App.  D.  C.  365 192 

Lipe  V.  Miller,  105  O.  G.  1532   (1903)    21 

Lipe  V.  Miller,  109  O.  G.  1608 81,  257 

Lipscomb  v.  Pfeiffer,  122  O.  G.  351  (1906)   212 

Lizotte  V.  Neuberth,  124  O.  G.  1842  (1906)  66 

Lobel  V.  Cassey,  157  Fed.  664, 211 

Lockwood  V.  Schmidt,  100  O.  G.  453;    1902  C.  D.  253 50 

Long  V.  Flaag,  190  O.  G.  265  (1913)   89 

Loomis  V.  Hauser,  99  O.  G.  1172  (1902)  ;    19  App.  D.  C.  401       141 
Lorimer  v.  Erickson,  227  O.  G.  144S ;    44  App.  D.  C.  503  ...        136 

Lotterhand  v.  Cornwall,  148  O.  G.  1344  (1909)   38 

Lotterhand  v.  Cornwall,  154  0.  G.  515  (1910)   63 

Lotterhand  v.  Hanson,  110  O.  G.  861,  23  App.  D.  C.  372  .  .112,  247 

Lottridge  v.  Eustice,  121  O.  G.  689  (1906)   14,  38 

Lotz  V.  Kenny,  19  Gour.  50-10  (July,  1907)    .  •. 103 

Lowry  v.  Allen,  203  U.  S.  476   3 

Lowry  v.  Spoon,  14  Gour.  52-7  (July,  1902)    256 

Lowry  v.  Spoon,  110  O.  G.  858   92,  96 

Lowry  v.  Spoon,  122  O.  G.  2687 165,  244 

Lowry  v.  Spoon,  124  O.  G.  1846  (1906)   165 

xvii 


Section 

Lowrie  v.  Taylor,  118  O.  G.  1681  (1905)    100,  141 

Lowrie  v.  Taylor,  123  O.  G.  1665    (1906)  ;    27  App.  D.  C. 

522   .' 100,128,134 

Luby  V.  Taylor,  118  O.  G.  835  (1905)    112 

Luckett  Y.  Straub,  250  O.  G.  999   (1918)    274a 

Luellen  v.  Claussen,  190  O.  G.  265  (1913)  168 

Luke  V.  Cahill,  110  O.  G.  .2235  206 

Luger  V.  Browning,  100  O.  G.  231 ;    1902  C.  D.  230 12,  78 

Lutz  V.  Lewis,  110  O.  G.  2014 ,. .  .  .  9o 

Macey  v.  Laning,  101  O.  G.  1608;    1902  C.  D.  399 215,  256 

Manley  v.  Williams,  168  O.  G.  1034,  37  App.  D.  C.  194 192 

ilanley  v.  WilUams,  21  Gour.  85-11  (Aug.,  1909)   89 

Marconi  v.  Shoemaker,  121  O.  G.  2664  (1906)   195, 197 

Marconi  v.  Shoemaker,  131  O.  G.  1939  (1907)   154 

Marconi,  In  re,  179  O.  G.  577,  38  App.  D.  C.  286 232,  243 

Mark  v.  Greenewalt,  118  O.  G.  1068  (1905)    224 

Marsh  v.  Grace,  127  O.  G.  1993  (1907)   195 

Martin  v.  Goodrum,  130  O.  G.  1485  (1907)   84 

Mason  v.  Hepburn,  84  O.  G.  147,  13  App.  D.  C.  86 122,  141,  157 

Matthes  v.  Burt,  114  O.  G.  764.  2i  App.  D.  C.  265 157 

Matthes  v.  Burt,  111  O.  G.  1363,  24  App.  D.  C.  265 -     192 

Mattice  v.  Langworthy,  132  O.  G.  678  (1907)   64 

Mattice  v.  Langworthy,  140  O.  G.  507  (1909)    195 

Maxwell  v.  Byron,  98  O.  G.  1968 ;    1902  C.  D.  67 15 

McBride  v.  Kemp,  109  O.  G.  1069 224 

McBerty  v.  Shore,  175  O.  G.  843  (1911)   87 

:NrcDermott,  15  Gour.  88-26  (Oct.,  1903)   243 

McDermott  v.  Hiklreth,  98  O.  G.  1282;    1902  C.  D.  43 49,  50 

McDonald  v.  Edison,  105  O.  G.  973  (1903)   124.  133,  157 

McDonald  v.  Edison,  105  O.  G.  1263  (1903) ;    21  App.  D.  C. 

527   133,  141 

McCheslcy  v.  Kruger,  101  O.  G.  219  ;    1902  C.  D.  349 256 

McConnell  v.  Wood,  250  O.  G.  767 180 

McDuflfe  V.  Hestonville  Co.,  181  Fed.  503  126 

^[cFarland  v.  Watson,  146  O.  G.  257,  33  App.  D.  C.  445  .  . .      247a 

McGill  V.  Adams,  119  O.  G.  1924  (1905)   256 

McHarg  v.  Schmi<lt,  105  O.  G.  263  (1903)    48 

McHarg  v.  Schmidt,  106  O.  G.  1780  (1903)    245 

McKean  v.  Morse,  94  O.  G.  1557 ;    1901  C.  D.  33 223 

McKcen  v.  Jerdone,  153  O.  G.  272,  34  App.  D.  C.  163 164 

McKnight  v.  Pohl,  105  O.  G.  977,  22  App.  D.  C.  219  .  .103, 185,  192 
McKnight  v.  Pohl,  130  O.  G.  2069  (1907)  ;    30  App.  D.  C.  92       102 

McKenzie  v.  Gillespie,  93  O.  G.  2103 84 

xviii 


Section 

McMulkin  V.  Bollee,  126  0.  G.  1356  (1906)    102 

McNeil  V.  Stephenson,  192  0.  G.  517  (1913)    128,  220 

McNeal  v.  Macey,  106  O.  G.  2287  (1903)    123 

McQuan-ie  v.  Manson,  142  O.  G.  288  (1909)   244 

Mead  v.  Davis,  136  O.  G.  2001  (1908)  ;    31  App.  D.  C.  590  .        122 

Meden  v.  Curtis,  117  O.  G.  1795  (1905)    78 

Mell  V.  Midgley,  136  0.  G.  1534;    31  App.  D.  C.  534 247 

Mercer,  ex  parte,  393  O.  G.  1017  (1913)   13 

Mergenthaler  v.  Scudder,  81  0.  G.  1417,  11  App.  D.  C.  264.  .101,  103 

Meyer  v.  Sarfert,  96  0.  G.  1037;    1901  C.  D.  91 78,  92 

Meyer  v.  Sarfert,  102  O.  G.  1555  (1903)    157 

Miehle  v.  Scott,  190  O.  G.  1030,  40  App.  D.  C.  17 141,  144,  145 

Miehle  v.  Bead,  96  0.  G.  426,  18  App.  D.  C.  128  .  .96,  115,  126,  242 
Miel  V.  Young,  126  O.  G.  2591  (1906)  ;  29  App.  D.  C.  481  ..  ^  87 
Miel  V.  Young,  128  O.  G.  2532  (1907)  ;    29  App.  D.  0.  481  .  .  25 

Miles  V.  Todd,  112  O.  G.  1479   37 

Miller  v.  Kelley,  96  O.  G.  1038  (1901)  ;    18  App.  D.  C.  163  .        189 

Miller  v.  Perham,  ]21  O.  G.  2667  (1906)   87 

Miller  v.  Wallace,  131  0.  G.  1689  (1903)   48 

Miller  v.  Blackburn,  172  O.  G.  549  (1911)    103,  164 

Mills  V.  Torrence,  17  Gour.  67-6  (Oct.,  1905)    142 

Mills  V.  Torrence,  98  O.  G.  416  (1902)   50 

Milton  V.  Kiugsley,  75  O.  G.  2193,  7  App.  D.  C.  531 164,  192 

Miskolczy  v.  Glebsattel,  13  Gour.  19-6  (Apr.,  1901)    257 

Mixsell  V.  Lovejoy,  186  O.  G.  294  (1912)    S9 

Molyueux  v.  Onderdonk,  191  0.  G.  292   (1918)    154a 

Monte  V.  Dunkley,  245  0.  G.  278   25 

Moody  V.  Colby,  198  O.  G.  899,  41  App.  D.  C.  248 164 

Moore  v.  Hewett,  115  O.  G.  509  13,  62,  208 

Moore  v.  Hewett,  136  O.  G.  1535,  31  App.  D.  C.  577 156 

Moore  v.  Curtis,  120  0.  G.  324  (1905)    201 

Moore  v.  Bradley,  180  0.  G.  879  (1912)   88 

Mortimer  v.  Thomas,  192  O.  G.  215  (1913)    53,  201,  256 

Mosher  v.  Tully,  99  O.  G.  2968;    1902  C.  D.  224 216,  218 

Moss  V.  Blaisdell,  113  O.  G.  1703   16S 

Moss  V.  Blaisdell,  113  O.  G.  2505   196 

Mower  v.  Crisp,  83  O.  G.  155 157 

Mower  v.  Duell,  Com  'r,  88  O.  G.  191   157 

Munro  v.  Alexander,  106  O.  G.  1000   5,  92 

Munster  v.  Ainsworth,  128  O.  G.  2085  (1906)   . 18,  195 

Murphy  v.  Borland,  132  O.  G.  231 66,  89 

Murphy  v.  Cooper,  228  O.  G.  1458,  45  App.  D.  C.  307 35 

Myers  v.  Brown,  112  O.  G.  2093    13,  78 

six 


Section 

Narman  v.  Krimelbein,  118  O.  G.  2251  (1905)   78 

National  Ey.  Materials  Co.,  129  O.  G.  481  (1907)   14 

Nanlty  v.  Cutler,  126  O.  G.  389    (1907)    18,  214,  219 

Nelson  v.  IT.  S.,  201  U.  S.  92   197 

Nelson  v.  Faueette,  143  O.  G.  1348,  33  App.  D.  C.  217 121 

Neill,  ex  parte,  82  O.  G.  749,  11  App.  D.  C.  582 7 

Nesbit  V.  Eiverside  etc.,  144  U.  S.  610 232 

Neth  V.  Ohmer,  123  0.  G.  998,  27  App.  D.  C.  319 46,  238 

Neth  V.  Ohmer,  116  0.  G.  874  (1905)    47,  48 

Neth  V.  Ohmer  etc.,  135  O.  G.  662,  30  App.  D.  C.  478  ......        164 

Neuberth  v.  Lizotte,  141  O.  G.  1165,  32  App.  D.  C.  329 29 

Newcomb  Motor  Co.  v.  Moore,  133  O.  G.  1680'  (1908);    30 

App.  D.  C.  464   234,  247 

Newcomb  v.  Lemp,  110  O.  G.  307 221 

Newcomb  v.  Thompson,  122  O.  G.  3012  (1906)    53,  242 

New  Orleans  v.  Citizen's  Bank,  167  U.  S.  371 232 

Newell  V.  Clifford,  122  0.  G.  730   (1905)    212 

Newell  V.  Clifford,  125  0.  G.  665  (1906)   216,  218 

Newell  V.  Eose,  119  0.  G.  337   (1905)    89 

Newell  V.  Hubbard,  15  Gour.  82-3  (Dec,  1903)    58 

Neidringhaus  v.  MeConnell,  121  O.  G.  338   (1905)    168 

Niedermeyer  v.  Walton,  98  O.  G.  1707;  1902  C.  D.  56 257 

Noble  V.  Levine,  180  0.  G.  602  (1912)   154a 

Norling  v.  Hayes,  166  O.  G.  1282  (1911),  37  App.  D.  C.  169       247 

Norman  v.  Krimmelbein,  115  O.  G.  249 60 

Numan  v.  Ashley,  175  O.  G.  1098  (1912)    255 

Oakes  v.  Young,  152  O.  G.  1225   121 

O'Connor  v.  Vanderbilt,  102  O.  G.  1782  (1903)   61,  62 

O'Connel  v.  Schmidt,  118  O.  G.  588  (1905)    113 

O'Connell  v.  Schmidt,  122  O.  G.  2065   (1906);    27  App.  D. 

C.  77   141,  249 

Ocumpaugh  v.  Norton,  115  O.  G.  1850,  25  App.  D.  C.  90  .  .135,  156 
Ohmer  v.   Neth,   118   O.   G.    1686    (1905);     123   O.   G.   998 

(1906)  ;    27  App.  D.  C.  319  39,  250 

Oldham  v.  Peck,  99  O.  G.  670 ;    1902  C.  D.  148 66 

Oliver  V.  Felbel,  100  O.  G.  2384;    1902  C.  D.  565,  20  App.  D. 

C.  255   88,  105,  124 

Orcutt,  In  re,  141  O.  G.  567 7 

Orcutt  V.  McDonald,  118  O.  G.  591   (1905)  ;    123  O.  G.  1287 

(1906)  ;    27  App.  D.  0.  228  164,  250 

Osborne  v.  Armstrong,  19  Gour.  3-8  (Jan.,  1907)    102 

Osborne  v.  Armstrong,  114  O.  G.  2091   92,98 

Osljorno  v.  Austin,  115  O.  G.  1065   218 


Section 

Otis  Elevator  Co.  v.  Tiitcrboroiigli  Co.,  222  Fed.  501 133 

Owen  V.  Eicliardson,  111  O.  G.  1037  (1904)    65,  6G 

Papendell  v.  Bunnell,  131  O.  G.  362  (1907)   66 

Parker  v.  Lewis,  110  0.  G.  305   50 

Parker  v.  Lewis,  120  0.  G.  323  (1905)   193 

Parker  v.  Spoon,  14  Gour.  19-8  (Apr.,  1902)    216 

Parker  v.  Craft,  265  0.  G.  309   247 

Patee  v.  Cook,  16  Gour.  2-1 168 

Patterson  v.  Heher,  192  O.  G.  215  (1913)   81,  257 

Paul  V.  Hess,  113  0.  G.  847   26 

Paul  V.  Hess,  115  O.  G.  251,  24  App.  D.  C.  462 96,  141,  156 

Paul  V.  Chapin,  187  O.  G.  831 49 

Paul  V.  Johnson,  109  O.  G.  807,  23  App.  D.  C.  187 192 

Paul  V.  Johnson,  109  0.  G.  807,  23  App.  D.  C.  548 109,  111 

Paul  V.  Johnson,  106  0.  G.  2013  (1913)    119 

Peckham  v.  Price,  118  O.  G.  1934   (1905);    26  App.  D.  C. 

556   164,  183 

Perrault  v.  Pierce,  108  O.  G.  2146 244 

Perri  v.  Thoma,  188  O.  G.  1053,  39  App.  D.  C.  460 179 

Perkins  v.  Weeks,  188  O.  G.  1052  (1913)    ^ 89 

Perrussel  v.  Wickmann,  99  O.  G.  2970;    1902  C.  D.  228 52 

Peters  v.  Hopkins,  150  O.  G.  1044,  34  App.  D.  C.  141 237 

Phelps,  ex  parte,  176  O.  G.  525 236 

Phelps  V.  Wonnley,  118  0.  G.  1069  (1905)    89 

Phillips  V.  Sensenieh,  132  O.  G.  677  (1907)   27 

Phillips  V.  Sensenieh,  122  O.  G.  1047  (1906)    78 

Phillips  V.  Scott,  130  O.  G.  1312  (1907)    66 

Philadelphia  etc.  R.  Co.  v.  Stimson,  14  Peters  448 101 

Piermann  v.  Chisholm,  44  App.  D.  C.  460 157 

Pittsburgh  Brake  Shoe  Co.,  In  re,  176  O.  G.  750  (1912)  ...  234 
Podelsak  v.  Mclnnerney,  120  0.  G.  2127,  26  App.  D.  C.  399 

31,  87,  103,  163,  192,  246,  247 

Poe  V.  Seharf,  130  O.  G.  1309  (1907)    125 

Pohle  V.  McKnight,  119  0.  G.  2519  (1915)   156 

Pool  V.  Dunn,  151  O.  G.  450,  34  App.  D.  C.  132 141, 142 

Pope  V.  Mims,  104  O.  G.  2147   (1903)    50 

Pope  V.  McKenzie,  176  O.  G.  1072,  38  App.  D.  C.  Ill 158 

Potter  V.  Tone,  163  0.  G.  729  (1911)   146 

Potter  V.  Oehs,  95  O.  G.  1049 ;    1901  C.  D.  39 18, 195 

Potter  V.  Mcintosh,  122  O.  G.  1721   (1906)    254 

Potter  V.  Mcintosh,  127  O.  G.  1995,  28  App.  D.  C.  510 80 

Potter  V.  Van  Cleck,  95  O.  G.  2484 ;    1901  C.  D.  53 58 

Pratt  V.  De  Ferranti,  148  O.  G.  569   35 


Section 

Putman  v.  Wetmore,  181  O.  G.  269,  39  App.  D.  C.  138 152 

Pupin  V.  Hutin,  100  0.  G.  931 ;    1902  C.  D.  269 

Pym  V.  Hadaway,  125  O.  G.  1702 165 

Quick  y.  ^klcGee,  107  O.  G.  1376 21 

Quist  T.  Ostrom,  106  O.  G.  1501   154, 156 

Quist  V.  Ostrom,  108  O.  G.  2147,  23  App.  D.  C.  69 157 

Eagena  v.  Harris,  150  0.  G.  266  (1909)   72 

Eanderson  v.  Hanna,  173  O.  G.  586  (1911)    22 

Eaulet  V.  Adams,  114  O.  G.  1827 98 

Earmond  v.  Kitzelman,  134  O.  G.  2243  (1908)  84 

Eead  v.  Scott,  14  Gour.  2-4 5,  66 

Eeckmitzer  v.  Bernegan,  193  O.  G.  512  (1913)   48 

Eeed  v.  Concrete  Machinery  Co.,  239  Fed.  869 88 

Eeece  v.  Fenwick,  97  O.  G.  188  (1901)  52 

Eeece  v.  Fenwick,  99  O.  G.  669  (1902)   60 

Eeece  v.  Fen-nick,  14  Gour.  3-7  (Feb.,  1902)  12,  61 

E^ichenbach  v.  KeUey,  94  O.  G.  1185;    1901  C.  D.  282 156 

Eeigger  v.  Beirel,  150  O.  G.  826  (1909)   73 

E«inhart  v.  Gibson,  185  O.  G.  1383,  39  App.  D.  C.  358 160 

Eeitzel  v.  Harmatta,  161  O.  G.  1043   (1910)   89 

Eeis  V.  Jebsen,  132  0.  G.  845  (1907)  ;    30  App.  D.  C.  199  .  .  249 

Eeynolds  v.  Bean,  100  O.  G.  1763;    1902  C.  D.  307 38 

Eeynolds  v.  Bean,  101  O.  G.  2821 ;    1902  C.  D.  461 244 

Eichards  v.  Kletzker,  98  O.  G.  1709 ;    1902  C.  D.  62 68 

Eichards  v.  Meisner,  114  O.  G.  1831 44,  247,  251 

Eiddle,  ex  parte,  145  O.  G.  1021   7 

Eies  V.  Frick,  160  O.  G.  1040  (1910)    18 

Einchart  v.  Gibson,  185  O.  G.  527   141 

Eitter  v.  Krakau,  104  O.  G.  1897  165 

Eitter  v.  Krakau,  108  O.  G.  1050  218 

Eitter  v.  Krakau,  114  O.  G.  1553,  24  App.  D.  C.  271 247 

Eoberts  v.  Webster,  115  O.  G.  2135  (1905)   22 

Eoberts  v.  Bachelle,  101  O.  G.  1831;    1902  C.  D.  415 21S 

Eobinson  v.  McCormick,  128  O.  G.  3289,  29  App.  D.  C.  98  .  .  138 

Eobin  V.  Muller,  107  O.  G.  2527  (1903)   21 

Eobinson  v.  Mullcr,  110  O.  G.  1429  124 

Eobbins  V.  Titus,  111  O.  G.  584 81,  257 

Eobin.son  v.  Copeland,  102  O.  G.  466  (1903)   93 

Eobinson  v.  Copeland,  111  O.  G.  579 114 

Eobinson  v.  Copeland,  112  O.  G.  501,  24  App.  D.  C.  68 37,  115 

Eobinson  v.  Seelinger,  116  O.  G.  1735  (1905)  ;    25  App.  D.  C. 

237   94 

3uii 


Section 

Robinson  v.  McCorniick,  128  0.  G.  3289  (1907)   138,  164 

Robinson  v.  Thresher,  18  Gour.  21-21   (Mar.,  1906)   10:5 

Robinson  v.  Thresher,  123  O.  G.  2975,  28  App.  D.  C.  22 139 

Robinson  v.  Thresher,  123  O.  G.  2627 149 

Robinson  v.  Townsend,  106  0.  G.  997  (1903)    ..  ..213,217,219,227 

Robinson  v.  Townsend,  107  O.  G.  1376   216 

Rochstroh  v.  Warnock,  132  O.  G.  234 244 

Roe  V.  Hanson,  99  O.  G.  2.550  (1902)  ;    19  App.  D.  C.  559  .  .        142 

Rolfe  V.  Kaisling,  143  O.  G.  562,  32  App.  D.  C.  582 122,  181 

Rolfe  V.  Hoflfnian,  121  O.  G.  1350  (1905)   141,  142 

Rolfe  V.  Leeper,  159  O.  G.  991  (1910)    217 

Rolfe  V.  Taylor,  111  O.  G.  1938 195 

Root  V.  Third  Ave.  R.  Co.,  146  U.  S.  221 166 

Rose  V.  Clifford,  135  O.  G.  1361   (1908)    122 

Roulet  V.  Adams,  114  O.  G.  1827 8,  14 

Rountree  v.  Sloan,  189  O.  G.  1281  (1913)    66 

Rountree  v.  Sloan,  45  App.  D.  C.  207 185 

Rowe  V.  Hanson,  99  O.  G.  2550;    1902  C.  D.  546 121 

Rowe  V.  Brinkmann,  133  O.  G.  515   (1908)    89 

Rowe  V.  Brinkmann,  172  O.  G^  1090   121 

Royce  v.  Kempshall,  117  0.  G.  2090   196 

Royee  v.  Kempshall,  119  O.  G.  338  (1905)    191 

Royce  v.  Kempshall,  125  O.  G.  1347  (1906)    127,  162,  181 

Ruete  V.  Elwell,  15  App.  D.  C.  21  29 

Rusby  V.  Cross,  204  O.  G.  321,  42  App.  D.  C.  341 232 

Ruthven  v.  Christeusen,  138  O.  G.  257  (1908)   193a 

Ryder  v.  White,  145  O.  G.  763  (1919)    48 

Sachs  V.  Haskins,  21  Gour.  17-1  (March,  1909)    141 

Samboni,  20  Gour.  22-14 13 

Sarfert  v.  Meyer,  98  0.  G.  793 ;    1902  C.  D.  30 168 

Sarfert  v.  Meyer,  109  0.  G.  1885   58,  229 

Sauer  v.  Groebli,  239  O.  G.  653  '  121 

Saunders  v.  Miller,  146  O.  G.  505,  33  App.  D.  C.  456 182 

Schneider  v.  Driggs,  162  0.  G.  1000,  36  App.  D.  C.  116  .  ..153,  181 

Schmidt  v.  Clark,  138  O.  G.  768,  32  App.  D.  C.  290 151,  ISO 

Schroeder  v.  Wageley,  118  O.  G.  268  (1905)    164 

Schrum  v.  Baumgarten,  104  O.  G.  577 168 

Schuler  v.  Barnes,  140  0.  G.  509  (1909)   89 

Schupphaus  v.  Stevens,  95  O.  G.  1452,  17  App.  D.  C.  548   .  .        247 
Scott    V.    Scott,    96    O.    G.    1650    (1901);     18    App.    D.    C. 

-     420 18.5,  190,  191 

Scott  V.  Laas,  118  O.  G.  1367   (1905)    HO 

Scott  V.  Southgate,  121  O.  G.  689   98 

xxiii 


Section 

Scott  V.  Emmett,  119  O.  G.  2233  (1905)    57 

Seacomb  v.  Burke,  182  O.  G.  973   (1912)    .^.  .87,  256 

Seaniau  v.  Brooks,  100  O.  G.  685 ;    1902  C.  D.  267 48 

Seeberger  v.  Kussell,  107  O.  G.  2528  (1903)   48 

Seeberger  v.  Eussell,  121  O.  G.  2328,  26  App.  D.  C.  244  .  .  .150,  154 

Seeberger  v.  Dodge,  113  O.  G.  1415  107,  119 

Seeberger  v.  Dodge,  114  O.  G.  2382,  24  App.  D.  C.  476 

115,  117,  119,  247 

Seller  v.  Goldberg,  116  O.  G.  595   132 

Sendelbaeh  v.  Gillette,  109  O.  G.  276,  22  App.  D.  C.  168   97,^02, 124 

Shaffer  v.  Dolan,  100  O.  G.  3012 ;    1902  C.  D.  344 218 

Sharer  v.  McHenry,  98  0.  G.  585 ;    1902  C.  D.  503 97 

Shaw  etc.  v.  Quaker  Citj  Shirt  Co.,  157  O.  G.  1000  (1910)    .      194a 

Sherwood  v.  Drewsen,  124  O.  G.  1205   (1906)    184 

Sherwood  v.  Drewsen,  130  O.  G.  657,  29  App.  D.  C.  161 192 

Shoemaker  v.  Sintz,  123  O.  G.  2947  (1906)   37 

Shreeve  v.  Grissinger,  202  O.  G.  951  (1914)   126 

Shrum  v.  Banningarten,  104  O.  G.  577  (1903)    89 

Shuman  v.  Beall,  123  O.  G.  1664 138,  163 

Silver  v.  Eustis,  14  Gour.  4-8  (Jan.,  1902)    49 

Silverman  v.  Hendriekson,  99  O.  G.  445 ;    1902  C.  D.  123  .  .  146, 180 

Slaughter  v.  Halle,  102  O.  G.  469  (1903)    186 

Slick  V.  Hansen,  181  O.  G.  1076,  39  App.  D.  C.  131 120 

Slingluff  V.  Sweet,  230  O.  G.  659  (1916)  ;    45  App.  D.  C.  302       247 

Smith  V.  Foley,  136  0.  G.  847  (1907)   103, 154a 

Smith  V.  Brooks,  112  O.  G.  953,  24  App.  D.  C.  75 124,  134, 196 

Smith  V.  Griggs  Mtfg.  Co.,  123  U.  S.  264 167 

Smith  V.  Ingram,  131  O.  G.  2420  (1907)    59 

Smith  V.  Kilgren,  215  O.  G.  324,  43  App.  D.  C.  193 183 

Smith  V.  Slocum,  123  O.  G.  1990   (1906)    83 

Smith  V.  Hill,  177  O.  G.  523  (1912)   154a 

Snyder  v.  Woodward,  173  O.  G.  863  (1911)    168 

Sobey  v.  Holsdilaw,  126  O.  G.  3041,  28  App.  D.  C.  65 

29,  80,  85,  86,  167,  247,  254 

Soley  V.  Hebbard,  5  App.  D.  C.  99,  70  O.  G.  921 164 

Somervillc  v.  Larmuth,  190  O.  G.  1028  (1913)   48 

Sorrell  v.  Donnelly,  129  ().  G.  2501   (1907)    254 

Sovereign  v.  Lillie,  185  O.  G.  830  (1912)    79 

Spaulding  v.  Norden,   112  O.  G.  2091,   114  O.   G.   1828,  24 

App.  D.  C.  286   134 

Si)oon,  97  O.  G.  176,  1901  C.  D.  188   10 

Stanbon  v.  Howe,  153  O.  G.  823,  34  App.  D.  C.  413 154 

Stapleton   v.   Kinney,  96  O.  G.   1432    (1901);     18   App.   D. 

C.  394   112 


Section 

Steele  v.  Meyers,  205  O.  G.  1021   (1914)    14,  911 

Steinberger  v.  Hewlett,  183  O.  G.  1308  (1912)    181 

Steinmetz  v.  Hewitt,  107  0.  G.  1972  (1903)   191 

Steiumetz  v.  Thomas,  137  O.  G.  479  (1908)  ;    31  App.  D.  C. 

574  l'J'5 

Stevens  v.  Seher,  81  O.  G.  1932,  11  App.  D.  C.  245 192 

Stewart  v.  Thomas,  202  O.  G.  1262,  42  App.  D.  C.  222 144,  157 

Stoetzel  V.  Fordyee,  21  Gour.  2-4  (Jan.,  1909)    180 

Stonaeh  v.  Shaw,  192  O.  G.  989  (1913)   256 

Strauble  v.  Young,  119  O.  G.  338  (1905)    198 

Streat  v.  Freckelton,  87  O.  G.  695 30 

Stroud  V.  Miller,  101  O.  G.  2075;    1902  C.  D.  423   195 

Struble  v.  Young,  139  O.  G.  729  (1909)    216 

Struble  v.  Young,  121  O.  G.  339  (1906)    89 

Sugden  v.  Laganke,  130  O.  G.  1484  (1907)   89 

Summers  v.  Hart,  98  O.  G.  2585;    1902  C.  D.  104 206,  207 

Sutton  V.  McDonald,  98  0.  G.  1418 ;    1902  C.  D.  47 218 

Sutton,  Steele  &  Steele,  121  O.  G.  1012   (1906)    52,230,242a 

Sutton  V.  Steele,  107  O.  G.  541  13 

Swaren  v.  Sandage,  17  Gour.  34-1  (Apr.,  1905)   14,  22;3 

Sweihart  v.  Mauldin,  99  O.  G.  665;    1902  C.  D.  137   133 

Swihart  v.  Mauldin,  99  0.  G.  2332,  19  App.  D.  C.  570 247,  249 

Swinglehurst  v.  Ballard,  265  O.  G.  459,  258  Fed.  973 159, 193 

Sydemau  v.  Thoma,  141  0.  G.  866,  32  App.  D.  C.  362 154 

Talbot  V.  Mouell,  99  O.  G.  2965;    1902  C.  D.  216 194,  198 

Talbot  V.  Alonell,  109  O.  G.  280,  23  App.  D.  C.  108 97 

Taylor  v.  Gilman,  158  O.  G.  883  (1910)    152 

Taylor  v.  Westinghouse,  119  O.  G.  1257   (1905)    114, 115 

Temple  v.  Goodrum,  176  O.  G.  526   233 

Templin  v.  Sergeant,  119  O.  G.  961  (1905)   78 

Thibodeau  v.  Hildreth,  117  0.  G.  601,  25  App.  D.  C.  320  ...        164 

Thieme  v.  Bowen,  21  Gour.  70-13  (Aug.,  1909)    22,  256 

Thomas  v.  Weintraub,  175  0.  G.  1097  (1911)   158 

Thomas  v.  Weintraub,  177  O.  G.  772,  38  App.  D.  C.  281   .  . .  46 

Thomas  v.  Trissell,  97  O.  G.  1598;    1901  C.  D.  200 48,  50 

Thomas  v.  Trissell,  107  O.  G.  265   (1903)   133 

Thomas  v.  Stewart,  202  O.  G.  1259   (1913)  ;    42  App.  D.  C. 

222   137 

Thomas  v.  Weston,  99  O.  G.  864;    1902  C.  D.  521 154 

Thomas  v.  Weston,  94  O.  G.  985,  19  App.  D.  C.  373 157 

Thomas  &  Son  Co.  v.  Electric  Porcelain  Mig.  Co.,  97  O.  G. 

1838,  111  Fed.  923  242 

Thompson,  98  O.  G.  227 ;    1902  C.  D.  6  13 

XXV 


Sectiou 

Thompson  v.  Storrie,  245  O.  G.  845,  46  App.  D.  C.  324 109 

Thullen  v.  Townsend,  130  O.  G.  1312  (1907)   66 

Thuken  v.  Young,  118  O.  G.  2251   (1905)    66 

Toledo  Scale  Co.  v.  Dunn,  214  0.  G.  1321,  43  App.  D.  C.  377  92 

Townsend  v.  Thullen,  137  O.  G.  1710  (1908)   235 

Townsend  v.  Thullen,  21  Gour.  37-12  (May,  1909)   216 

Townsend  v.  Ehret,  137  O.  G.  1484  (1908)    15,  89 

Townsend  v.  Ehret,  137  O.  G.  1485  (1908)   235 

Townsend  v.  Copeland,  100  O.  G.  683  (1902)   216 

Townsend  v.  Copeland,  126  O.  G.  1355  (1907)   '. .  52,  53 

Townsend  v.  Copeland,  124  0.  G.  623  (1906)   62 

Townsend  v.  Corey,  119  0.  G.  2237  (1905)    203 

Tower  v.  Yost,  19  Gour.  66-6  (July,  1907)    114 

Tournier,  108  O.  G.  798   243 

Tracey  v.  Leslie,  14  App.  D.  C.  126   29 

Trissell  v.  Thomas,  109  O.  G.  809,  23  App.  D.  C.  219 133 

Tripp  V.  Wolff,  103  O.  G.  2171  (1903)    87 

Tripp  V.  Wolff,  108  O.  G.  563   18 

Tripler  v.  Linde,  101  0.  G.  2288;    1902  C.  D.  444 95 

Tripler  v.  Linde,  102  O.  G.  1297  (1903)    188 

Truax  v.  Robinson,  13  Gour.  82-2  (Dec,  1901 )    78 

Trufant  v.  Brindle,  101  O.  G.  1608;    1902  C.  D.  397 100,  192 

Turnbull  v.  Curtis,  120  O.  G.  2442   (1905)    

104,  107,  1 12,  117,  180,  182 

Turnbull  v.  Curtis,  123  O.  G.  2312  (1906)    116 

Turner  v.  Benzinger,  102  O.  G.  1552   (1903)    244 

United  Shoe  Machinery  Co.  v.  Greeneman,  153  Fed.  283   .  .  153,  154 

U.  S.  Wood  Preserving  Co.,  153  O.  G.  271  (1910)   168 

United  States  v.  Ewing,  Com  'r,  203  O.  G.  603,  42  App.  D.  C. 

176 167 

Universal  Motor  Truck  Co.  v.  Universal  Motor  Car  Co.,  197 

O.  G.  535,  41  App.  D.  C.  261 247 

Union  Distilling  Co.  v.  Schneider,  129  0.  G.  2503,  29  App. 

D.  C.  1   247 

Vanderveld  v.  Smith,  159  O.  G.  490  (1910)    66 

Van  Ausdel,  ex  parte,  91  O.  G.  1617  84 

Vielc  V.  Cummings,  19  Gour.  2-6   25 

Von  Keller  v.  Ilaydcn,  173  O.  G.  285  (1911)    191 

Voiglitmann  v.  Perkinson,  138  Fed.  56 101 

Votcy  V.  Wuest,  111  O.  G.  1627 6 

Vrcohind  v.  Fossciiden,   117  ().  G.  2633    (1905);    119  O.  G. 

1925 ^ 66 


Section 

Walker  v.  Lederer,  179  0.  G.  851  122 

Warner  v.  Smith,  94  O.  G.  311,  13  App.  D.  C.  Ill 124 

WatFon  V.  Tlioinas,  108  O.  G.  1590,  23  App.  D.  C.  65 119 

Webber  v.  Wood,  184  O.  G.  553 218 

Welch  V.  Aufiero,  219  0.  G.  930   (1915)    89 

Welshbach  v.  Cohn,  181  Fed.  122   156_ 

Wells  V.  Packer,  90  O.  G.  1947  (1900)    206 

Wende  v.  Horine,  118  O.  G.  1070  (1905)    70 

Wende  v.  Horine,  130  O.  G.  1311   (1907)    222 

Wcintraub  v.  Hewitt,  154  O.  G.  254,  34  App.  D.  C.  487 247 

Weiseuthanner  v.  Dodge  Metallic  Cap  Co.,  156  Fed.  365  ...  242a 

Weiseiithanner  v.  Goldstein,  111  O.  G.  810  (1904)    82 

Weis  V.  Mack,  185  O.  G.  830  (1912)    154a 

Werk  V.  Parker,  264  O.  G.  159,  249  U.  S.  130 243 

Wert  V.  Borst,  122  O.  G.  2062  (1906)    168,  254 

Werener,  139  O.  G.  197  (1909)   13 

Western  Electric  Co.  v.  Martin,  182  O.  G.  723,  39  App.  D. 

C.  147   29 

Western  Electric  Co.  v.  Sperry  Electric,  65  O.  G.  597 87 

Westinghoiise  v.  Hein,  159  Fed.  936   3,  236 

Wheeler  v.  Palmros,  133  O.  G.  230   (1908)    52 

Wliipple  V.  Sharp,  14  Gonr.  66-2  (Sept.,  1902)   257 

Wlaipple  V.  Sharp,  98  O.  G.  226 ;    1902  C.  D.  5 45 

Whipple  V.  Sharp,  112  0.  G.  1749  156 

White  V.  Powell,  160  O.  G.  776  (1910)    221 

White  V.  Hewitt,  115  O.  G.  1847  (1905)   21 

T^Tiitlock  V.  Scott,  99  O.  G.  1385  (1902)   206 

Whitman  v.  King,  160  O.  G.  260,  35  App.  D.  C.  449  181 

Whitney  v.  Brewer,  177  O.  G.  1296   157 

Whitall  V.  Gillespie,  171  O.  G.  744  (1911)    50 

Wickers  v.  Weinriim,  129  O.  G.  2501  (1907)    256 

Wickers  v.  Weinnurni,  117  O.  G.  1797  (1905)    78 

Wickers  v.  McKee,  129  O.  G.  869,  29  App.  D.  C.  4 141,  192 

Williams  v.  Gibbon,  20  Gour.  84-4  (Nov.,  1908)    57 

Williams  v.  Liberman,  100  O.  G.  1331;    1902  C.  D.  295 49 

Williams  v.  Foyer,  142  O.  G.  1114  (1909)    37 

Williams  v.  Webster,  148  O.  G.  280  (1909)   244 

Winslow  V.  Austin,  86  0.  G.  2171 181 

Winslow  V.  Austin,  14  App.  D.  C.  137   162 

Wintroath  v.  Chapman,  248  O.  G.  1004,  47  App.  D.  C.  428  .  .  192 

Wilson  V.  Ellis,  211  O.  G.  286,  42  App.  D.  C.  552 30 

Wilson  V.  Donelly,  21  App.  D.  C.  81   115 

Winter  v.  Slick,  107  O.  G.  1659  (1903)   124 

Wood  V.  Beckman,  89  O.  G.  2459,  15  App.  D.  C.  484 123 

xxvii 


Section 

Woods  V.  Poor,  126  O.  G.  391  (1906)    116,161 

Woods  V.  Poor,  130  O.  G.  1313   121 

Wood  V.  Pfister,  154  O.  G.  837  (1910)   80 

Woodbridge  v.  Winship,  21  Gour.  19-7   (Feb.,  1909)    193 

Woodbridge  v.  Winship,  145  O.  G.  1250,  33  App.  D.  C.  490  .        249 

Woodbridge  v.  Conrad,  165  O.  G.  241  (1911)    87 

Woodward  v.  Kennedy,  104  O.  G.  1393  (1903)    36,  50 

Woodward  v.  Newton,  86  O.  G.  490 65,  66 

Wright  V.  Lorenz,  101  O.  G.  664 157 

Wyman  v.  Donnelly,  104  O.  G.  310  (1903);    21  App.  D:  C. 

81     115,  140,  142,  148 

Yates  V.  Huson,  74  O.  G.  1732,  8  App.  D.  C.  93 192 

Yoder  v.  Mills,  34  O.  G.  1048  164 

Young  V.  Struble,  153  O.  G.  1223   126 

Young  V.  Eiek,  113  O.  G.  547  67,  206 


INTERFERENCES. 

1.  Orig-in  of  Interferences.  An  interference  is  a  statu- 
tory proceeding,  arising  solely  under  the  authority  of 
Sec.  4904,  and  means  a  disijute  on  the  question  of  prior- 
ity of  invention.  It  is  a  contest  between  rival  applicants 
for  a  patent,  or  a  contest  between  one  or  more  applicants 
for  a  patent,  and  the  owner  of  one  or  more  outstanding 
letters  patent.  Western  Electric  Mfg.  Co.  v.  Chicago 
Electric  Co.,  14  Fed;  G91. 

2.  Interference  Statute.  See.  4904,  R.  S.  U.  S. 
' '  Whenever  an  application  is  made  for  a  patent  which,  in 
the  opinion  of  the  Commissioner,  would  interfere  with 
any  pending  application,  or  with  any  unexpired  patent, 
he  shall  give  notice  thereof  to  the  applicants  or  appli- 
cant and  patentee,  as  the  case  ma}^  be,  and  shall  direct 
the  Primary  Examiner  to  proceed  to  determine  the  ques- 
tion of  priority  of  invention.  And  the  Commissioner 
may  issue  a  patent  to  the  party  who  is  adjudged  the 
prior  inventor,  unless  the  adverse  party  appeals  from 
the  decision  of  the  Primary  Examiner,  or  the  Board  of 
Examiners-in-Chief,  as  the  case  may  be,  within  such 
time,  not  less  than  twenty  days,  as  the  Commissioner 
shall  prescribe." 

3.  The  Declaration  of  Interference.  A  brief  but  gen- 
eral summary  of  the  Patent  Office  proceedings  in  Inter- 
ference cases  will  be  found  in  WestingJwuse  v.  Hein,  159 
Fed.  936-939,  in  which  Judge  Sanborn  said :  "When  an 
application  for  a  patent  is  filed,  an  officer  known  as  a 
Primary  Examiner  decides  whether  the  application  on 
its  face  sjiows  patentable  invention,  Rules  95,  96.  No 
appeal  lies  from  his  decision.  Rule  124.  Patentabilit.y 
being  affirmed,  it  may  occur  that  the  application  dis- 

■<  1 


closes  the  same  invention  as  another  application  on  file 
or  as  a  patent  already  issued.  If  so,  interference  exists, 
and  the  patent  officers  are  then  required,  according  tb 
the  practice  and  rules  of  the  office,  to  set  on  foot  an  inter- 
ference proceeding,  in  order  to  determine  which  of  the 
hostile  claimants  first  discovered  the  invention.  This 
proceeding  is  carried  on  before  the  Examiner  of  Inter- 
ferences, and  is  a  proceeding  inter  partes  and  results 
either  in  a  decision  awarding  priority  to  one,  ahd  deny- 
ing it  to  the  other,  or  for  some  particular  reason  denying 
priority  to  either. 

"This  question  of  priorit}'^  of  invention,  meaning  pri- 
ority in  time,  has  become  the  important  and  almost  sole 
question  for  consideration  in  an  interference  proceeding. 
Other  questions  may  arise  in  the  Patent  Office,  such  as 
whether  one  or  both  parties  has  the  right  to  make  the 
claim,  whether  he  has  really  disclosed  in  his  drawings  the 
invention  claimed,  whether  he  is  the  real  inventor,  wheth- 
er he  is  guilty  of  laches  or  estopped  to  claim  j)riority, 
whether  his  devise  is  operative,  whether  both  claim  the 
same  invention  so  as  to  actually  show  interference.  By 
the  course  of  practice  in  the  Patent  Office,  however,  an 
interference  proceedii^g  is  confined  to  the  question  of 
priority  in  .time,  other  questions  being  raised  by  mo- 
tion before  the  Primary  Examiner.  The  Examiner  of 
Interferences  may  also  call  the  attention  of  the  Commis- 
sioner to  facts  showing  that  no  interference  exists,  or 
that  the  declaration  of  interference  was  irregular,  and 
the  Commissioner  may  then  suspend  the  interference 
proceedings  and  remand  the  case  to  the  Primary  Ex- 
aminer for  consideration  of  the  question  so  raised.  Rule 
126.  It  may  also  appear  in  the  interference  proceedings 
that  while  ])()th  applications  disclose  patentability  and 
interference,  and  one  is  clearly  prior  in  time,  yet  that 
neither  party  is  entitled  to  a  judgment  of  priority 
against  the  other,  because  it  would  operate  inequitably 
against  the  other.    This  happened  in  Bechman  v.  Wood, 

2 


15  App.  D.  C.  484,  where  Wood  first  discovered  a  broad 
invention,  but  made  only  a  narrow  claim,  and  the  junior 
applicant,  Bechman,  claimed  a  specific  device  in  the 
same  field,  and  also  claimed  the  broad  invention.  Wood 
was  adjudged  to  be  not  entitled  to  the  broad  claim  be- 
cause this  would  defeat  Bechman 's  special  apparatus, 
and  Bechman  was  not  entitled  to  it  because  he  was  not 
the  first  inventor,  but  in  the  ordinary  case  an  award  of 
priority  follows  as  a  matter  of  course. 

"While  the  question  whether  the  interference  was 
properly  declared,  or  any  interference  in  facts  exists,  can 
not  be  directlj^  raised  in  the  interference  proceeding,  it 
may  by  a  motion  to  dissolve  the  interference.  It  is  the 
practice  to  present  to  the  Examiner  of  Interferences  a 
motion  to  transmit  the  motion  to  dissolve  to  the  Primary 
Examiner,  together  with  the  motion  to  dissolve.  If  the 
latter  motion  is  in  proper  form  he  transmits  it  to  the 
Primary  Examiner,  and  he  may  at  the  same  time  pro- 
ceed with  the  interference,  Rule  123.  When  the  Primary 
Examiner  has  decided  the  motion,  an  appeal  may  be 
taken  to  the  Commissioner  but  no  further  appeal  is  per- 
mitted, the  motion  being  regarded  as  an  interlocutory 
proceeding.  U.  S.  ex  rel.  Lowry  v.  Allen,  203  U.  S.  476, 
27  Sup.  Ct.  141,  51  L.  Ed.  281.  If  the  motion  to  dissolve 
is  denied,  the  Examiner  of  Interferences,  in  the  usual 
case,  renders  judgment  awarding  priority  of  invention 
to  one  of  the  contestants  and  also  fixes  the  limit  of  ap- 
peal from  such  judgment.  If  no  appeal  is  taken  letters 
patent  are  issued  to  the  successful  party,  and  the  Pri- 
mary Examiner  notifies  the  other  party  that  his  claims 
stand  finally  rejected.  Sec.  4904,  Rev.  St.  U.  S.  Comp. 
St.  1901,  p.  3389.  Rule  132.  If  the  defeated  party  de- 
sires to  appeal  he  may  do  so  within  the  time  limited. 
The  appeal  first  goes  to  the  Examiners-in-Chief  (Sec. 
4909,  U.  S.  Comp.  St.  1901,  p.  3390),  then  to  the  Com- 
missioner in  person  (Sec.  4910,  U.  S.  Comp.  St.  1901,  p. 
3391),  and  from  his  decision  to  the  Court  of  Appeals  of 

3 


the  District  of  Columbia  (Act  Feb.  9,  1893,  c.  74,  27  Stat. 
476,  Sec.  9,  U.  S.  Comp.  Statutes,  1901,  p.  3391)." 

( Note : — Since  the  above  decision  the  rules  of  practice 
have  been  amended  as  to  jurisdiction  of  officers  who  pass 
upon  motions  to  dissolve.) 

4.  Declaration  of  Interference  Is  Within  the  Discre- 
tion of  the  Commissioner.  Sec.  4904  commits  to  the  judg- 
ment of  the  Commissioner  the  effect  of  an  application 
upon  a  pending  one  as  to  whether  it  interferes  with  such 
pending  application;  something  more,  therefore  than 
the  effect  of  two  applications,  something  more  than  the 
mere  assertion  of  a  claim.  The  assertion  must  be,  in  the 
opinion  of  the  Commissioner,  an  interference  with  an- 
other, and  it  is  this  other  that  is  first  in  regard,  not  to  be 
questioned  except  at  the  instance  of  the  Commissioner  by 
an  exercise  of  judgment  upon  the  circumstances.  Ew- 
ing,  Commissioner  v.  U.  S.  ex  rel.  Fowler  Car  Co.,  238  0. 
G.  983,  244  U.  S.  1. 

5.  Earlier  Application  Excluded  in  Case  of  Doubt. 
When  there  is  doubt  as  to  whether  the  earlier  applica- 
tion discloses  the  invention  in  a  later  continuous  applica- 
tion involved  in  interference,  the  earlier  application 
will  be  excluded.    Munro  v.  Alexander,  106  0.  G.  1000. 

Mechanical  Equivalent.  x\n  interference  should  be 
declared  between  a  patent  and  an  application  where  a 
claim  of  the  application  is  the  same  as  the  claim  of  the 
patent  with  the  exception  of  one  element  which  is  a  me- 
chanical equivalent  of  a  like  element  of  the  patented 
claim.    Read  v.  Scott,  14  Gour.  2-4. 

6.  What  Should  Be  Made  Counts — Only  Claims  Pat- 
entably  Different.  Where  tlie  claims  are  not  patentably 
distinct,  an  issue  consisting  of  a  single  count  will  be  suf- 
ficient to  defermine  the  question  of  priority,  and  the 
parties  sliould  be  notified  that  if  prioritj^  of  invention  is 
awarded  against  them  their  claims  which  do  not  contain 
patentable  subject  matter  over  the  issue,  will  be  rejected. 
Votcy  V.  Wuest  v.  Doman,  111  0.  G.  1627. 

4 


7.  No  Interference  When.  A  party  is  not  entitled  to 
an  interference  if  his  claim  when  broadh^  construed  is 
unpatentable,  since  a  claim  must  be  patentable  before  it 
can  be  put  into  interference.  In  ex  parte  Riddle,  145  0. 
G.  1021,  Riddle  asked  to  be  put  into  interference  with 
certain  claims  of  patentees  Dement  and  Hull  and  insist- 
ed that  the  claims  were  patentable  because  patent  had 
been  granted  thereon,  but  it  was  held  that  when  read 
upon  the  Riddle  structure  it  could  not  be  allowed  because 
he  would  have  no  right  to  make  the  claim  and  in  this 
respect  the  case  was  distinguished  from  that  of  In  re  Or- 
cutt,  141  0.  G.  567. 

No  interference  will  be  declared  when  it  is  apparent 
from  the  outset  that  no  patent  can  issue  on  an  applica- 
tion, since  a  party  is  not  entitled  to  an  interference  ex- 
cept as  to  an  allowable  application.  Crane,  106  0.  G. 
999.  In  an  early  (1898)  and  important  decision  it  was 
held  that  an  interference  should  not  be  declared  where 
one  of  the  applications  contained  no  allowed  claims. 
Hammond  v.  Hart,  83  0.  G.  743. 

No  Interference  on  Rejected  Claims.  No  interference 
will  be  declared  on  claims  which  have  been  rejected. 
Holland,  99  0.  G.  2548;  1902  C.  D.  199;  Duker,  115 
0.  G.  803 ;  In  re  Neill,  82  0.  G.  749,  11  App.  D.  C.  582. 

8.  Prior  Application — Reference  to  in  Declaration.  If 
the  apj)lication  is  clearly  a  division  of,  or  a  continuation 
of  an  earlier  application,  the  Primary  Examiner  should 
so  state.  If  there  is  doubt  upon  this  question,  no  refer- 
ence should  be  made  to  an  earlier  application,  the  matter 
being  left  for  determination  upon  motion  to  shift  the 
burden  of  proof.  (See  Burden  of  Proof.)  Jackson  v. 
Patten,  150  0.  G.  265 ;  Roulct  &  Nicholson  v.  Adams, 
114  0.  G.  1827. 

9.  Preliminaries  to  Declaration  of  Interference.  Be- 
fore a  declaration  of  interference  all  preliminaries  must 
be  settled  by  the  Primary  Examiner,  and  the  issue  must 
be  clearly  defined;    the  invention  which  is  to  form  the 

5 


subject  of  the  controversy  must  be  decided  to  be  patent- 
able, and  the  claims  of  the  respective  parties  must  be  put 
in  such  condition  that  they  will  not  require  alteration 
after  the  interference  shall  have  been  finally  decided, 
unless  the  testimony  adduced  upon  the  trial  shall  neces- 
sitate or  justify  such  change.    Rule  9.5. 

10.  One  of  the  Applications  Should  Be  Ready  for  Al- 
lowance. Before  an  interference  between  two  pending 
applications  is  declared,  one  of  the  pending  applications 
should  be  placed  in  condition  for  allowance,  ^poon,  97 
0.  G.  176,  1901,  C.  D.  188. 

11.  Claims  Not  Forming  a  Part  of  the  Controversy 
Need  Not  Be  Considered.  AVhen  one  of  the  interfering 
applications  is  in  condition  for  allowance,  if  there  be  any 
claims  in  the  other  application  which  are  not  to  form 
part  of  the  controversy,  or  never  could  form  part  of  a 
controversy,  it  is  not  necessary  that  they  should  be  con- 
sidered before  declaring  the  interference.  Spoon,  97  0. 
G.  176,  1901  C.  D.  188. 

12.  Effect  of  Putting  a  Claim  in  Interference.  Put- 
ting a  claim  in  interference  is  an  allowance  of  the  claim. 
Luger  v.  Browning,  100  0.  G.  231, 1902  C.  D.  230;  Beece 
V.  Fenwick,  14  Gour.  3-7.  In  the  foregoing  cases  there 
had  been  no  allowance  of  the  claims  of  one  of  the  parties 
prior  to  the  declaration  of  interference.  If  any  question 
is  raised  on  such  state  of  the  record  it  should  be  by  mo- 
tion to  dissolve  upon  the  ground  of  irregularity  in  de- 
claring the  interference.  In  an  earlier  case  (1898)  of 
Hammond  v.  Hart,  83  0.  G.  743,  it  was  held  that  where 
one  of  the  applications  contained  no  allowed  claims  the 
interference  should  not  liave  been  declared. 

13.  Claim  Suggested  by  the  Examiner.  Rule  96.  The 
Examiner  has  tlie  right  and  it  is  his  duty  under  Rule  96 
to  suggest  claims.  The  purpose  of  the  practice  of  sug- 
gesting claims  is  not  for  the  purpose  of  avoiding  inter- 
ferences between  applications  because  of  some  differ- 
ences in  the  form  of  claims,  but  merely  by  suggestion  to 

6 


bring  the  parties  together  upon  an  issue  which  shall  be 
as  nearly  as  possible  the  same  as  the  claim  of  the  parties 
so  as  to  reduce  to  the  minimum  the  chances  for  motions 
and  controversies  during  the  progress  of  the  interference 
based  upon  differences  between  the  claims.  Thompson, 
98  0.  G.  227,  1902  C.  D.  6 ;  Myers  v.  Broivn,  112  0.  G. 
2093. 

Rule  96  provides  the  conditions  under  which  the  Ex- 
aminer may  suggest  claims  to  applicants  and  when  claims 
are  suggested  thereunder  the  applicant  should  make  the 
claims  in  the  precise  words  suggested  if  they  are  appli- 
cable to  his  structure,  but  at  all  events  should  vary  there- 
from as  slightly  as  possible.  BraucJit  v.  Murdoch,  13 
Gour.  66,  If  the  applicant  fails  to  make  the  claims  sug- 
gested within  the  time  specified,  such  failure  or  refusal 
shall  be  taken,  without  further  action,  as  a  disclaimer  of 
the  invention  covered  by  the  claim,  (Rule  96),  Where 
one  party  clainLs  only  a  part  of  a  combination  claimed  by 
another,  such  combination  claim  should  not  be  suggested, 
Mercer,  193  0.  G.  1017  (1913)  ;  Handenschild  v.  Huijck, 
164  0,  G,  515  (1911),  The  Examiner  may  suggest  the 
claims  of  a  patent  and  unless  such  claims  are  made  by  the 
applicant,  his  claims  may  be  rejected  and  the  correctness 
of  the  ruling  may  then  be  questioned  on  appeal.  Card 
V.  Card,  112  0.  G.  499  (1904).  Avoiding  the  languages 
of  patented  claims  to  avoid  an  interference  Avill  not  be 
permitted  where  the  inventions  are  the  same.  Card  v. 
Card,  supra.  The  Examiner  should  not  suggest  claims  to 
other  api^licants  who  disclose  the  process  but  claim  only 
the  apparatus  for  carrj'ing  out  the  process,  Werener, 
139  0.  G,  197  (1909).  A  party  may  not  argue  the  pat- 
entability of  suggested  claims  before  the  interference  is 
declared.  Sutton  v.  Steele,  107  0.  G.  541.  A  party  to 
whom  claims  are  suggested  can  either  make  them,  refuse 
to  make  them,  or  make  them  under  protest,  after  which 
he  may  make  a  motion  to  dissolve,  but  if  he  refuses  to 
make  them  the  Commissioner  will  not  review  the  ques- 

7 


tion  under  his  supervisory  authority.  Samhoni,  20  Gour. 
22-14;  Eichelherger  &  Hibner  v.  Dillon,  129  0.  G.  3161. 
Where  an  applicant  is  entitled  to  an  interference  with  a 
party  who  is  already  involved  in  a  different  interference 
on  different  subject  matter,  his  application  should  not  be 
held  until  final  termination  of  the  first  interference,  but 
the  Examiner  should  request  jurisdiction  of  the  applica- 
tion involved  in  the  first  interference  for  the  purpose  of 
declaring  a  new  interference.  Brakey,  156  0.  G.  797 
(1910) ;  Moore  v.  Hewitt  v.  Potter,  115  0.  G.  509  (1905). 
Since  under  Rule  96  the  Examiner  may  fix  the  time  with- 
in which  a  party  shall  make  suggested  claims,  if  the  ap- 
plicant is  unable  to  make  them  within  the  time  specified, 
he  may,  upon  proper  showing,  have  the  time  extended. 
Hellmund,  141  0.  G.  565  (1909). 

PARTIES  TO  INTERFERENCES. 

14.  Arrang-ement  of  Parties.  It  is  the  duty  of  the  Ex- 
aminer under  Rule  97  to  arrange  the  parties  to  an  inter- 
ference in  the  inverse  chronological  order  in  which  they 
filed  the  applications  directly  involved  in  the  interfer- 
ence. Eoulet  d-  Nicholson  v.  Adams,  114  0.  G.  1827 
(1905)  ;  Jackson  v.  Patten,  150  0.  G.  265  (1910)  ;  Steel 
&  Steel  V.  Meyers,  205  0.  G.  1021  (1914). 

Who  Are  Proper  Parties.  Only  those  who  can  make 
claim  to  all  the  counts  should  be  made  parties,  and  if 
there  is  another  party  who  can  make  some  of  the  counts, 
but  not  all  of  them,  a  new  interference  should  be  declared 
between  his  application  or  patent  and  the  other  appli- 
cations containing  like  claims.  Dotv  v.  Benson,  107  0. 
G.  1378  (1903).  An  assignee  may  prosecute  an  interfer- 
ence where  the  assignor  refuses  to  prosecute  the  same. 
SiK'li  right  of  an  assignee  may  be  determined  upon  mo- 
tion. Adams,  119  O.  G.  650  (1905)  ;  Lottridge  v.  Eus- 
tice,  121  0.  G.  689  (1906).  An  exclusive  licensee  will 
not  be  permitted  to  intervene  so  long  as  the  licensor  is  in 
good  fiiith  |)roseeutiiig  the  same.    The  National  Railways 


Materials  Co.,  129  0.  G.  481  (1907).  Judgment  may  be 
rendered  against  such  parties  as  fail  to  overcome,  in  their 
preliminary  statements,  the  prima  facie  ease  made  by  the 
party  first  filing.  Stvaren  v.  Sandage,  etc.,  17  Gour. 
34-1  (Apr.,  1905). 

15.  New  Parties  may  be  added  to  an  interference,  but 
that  does  not  extend  the  time  of  the  original  parties  for 
making  a  motion  to  dissolve  to  30  days  from  the  date  such 
new  party  is  added.  Townsend  v.  Ehret  etc.,  137  0.  G. 
1484  (1908).  It  is  too  late  to  add  new  parties  after 
decision  on  priority  has  been  rendered  by  the  Examiners 
in  Chief  and  the  Commissioner,  Corey  &  BaJcer  v.  Trout, 
99  0.  G.  2547 ;  1902  C.  D.  195.  One  who  does  not  claim 
all  the  counts  can  not  be  added  as  a  new  party,  but  where 
it  appears  that  an  applicant  can  make  part  of  the  counts 
the  Examiner  should  request  jurisdiction  for  the  purpose 
of  declaring  a  new  interference  with  the  parties  who 
make  the  same  counts.  Dow  v.  Benson,  107  0.  G.  1378 
(1903).  Where  it  is  found  on  motion  to  dissolve  that 
one  of  the  parties  has  no  right  to  make  the  claims,  the 
interference  should  be  dissolved  as  to  him  and  continued 
as  to  the  other  parties.  Maxwell  v.  Byron  v.  Henry,  98 
0.  G.  1968;   1902  C.  D.  67. 

16.  A  Sole  Applicant  May  Be  Placed  in  Interference 
With  Himself  and  Another  as  Joint  Applicants.  Gilbert  v. 
Gilbert  (&  Lindley,  160  0.  G.  775  (1910).  A  sole  appli- 
cant can  not  claim  the  benefit  of  an  earlier  application 
filed  by  himself  and  another.  Haskell  v.  Mirier  v.  Ball, 
109  0.  G.  2710.  A  joint  application  can  not  be  changed 
to  a  sole  application  by  motion.  Sole  inventors  and  joint 
inventors  are  distinct  entities.  GassoAi  &  Marklein  v. 
Odell,  190  0.  G.  1028  (1913). 

17.  Notice  to  Parties.  Kule  153  provides  that  in 
contested  cases,  reasonable  notice  of  all  motions  and 
copies  of  motion  papers  and  affidavits  must  be  served, 
as  provided  in  Rule  154.  Proof  of  service  must  be 
made  before  a  motion  will  be  entertained  by  the  office. 

9 


Motions  will  not  be  heard  in  the  absence  of  either 
party,  except  upon  default  after  due  notice. 

What  amounts  to  reasonable  or  due  notice  has  been 
defined  by  the  decision  which  will  be  hereinafter  set 
forth. 

Rule  154  provides  for  the  giving  of  due  notice  to  the 
opposing  party  of  the  taking  of  testimony,  as  to  the 
time  when  and  the  place  where  testimony  will  be 
taken,  of  the  cause  or  matter  in  which  they '  will  be 
used,  the  names  and  residences  of  the  witnesses  to  be  ex- 
amined; that  the  notice  shall  be  such  as  to  give  the 
opposing  party  or  his  attorney  full  opportunity  to  be 
present  and  cross-examine  the  witnesses.  If  witnesses 
are  examined  who  are  not  named  in  the  notice  and  the 
opposing  party  fails  to  object  to  the  examination  of 
such  witnesses,  or  cross-examine  them,  he  waives  his 
right  to  object  to  such  examination  for  want  of  no- 
tice. The  notice  shall  be  such  as  to  give  the  party  rea- 
sonable opportunity  to  travel  to  the  place  where  the 
testimony  is  to  be  taken,  or  to  the  place  where  the  mo- 
tion is  to  be  heard. 

18.  Notice  of  Taking  Testimony,  which  contains  the 
names  and  addresses  of  certain  witnesses  and  contains 
the  added  statement  "and  perhaps  others,"  is  not  good 
except  as  to  the  witnesses  named.  Potter  v.  Ochs,  95  0. 
G.  1049,  1901  C.  D.  39;  Tripp  v.  Wolf  v.  Jones,  108  0. 
G.  563.  Notice  by  telegram  on  Saturday  to  take  testi- 
mon}^  on  Tuesday,  which  did  not  give  the  names  and  ad- 
dresses of  witnesses,  but  followed  on  Monday  with  a 
formal  notice  of  the  taking  of  testimony  of  R,  "and  per- 
haps others,"  was  not  sufficient,  and  testimony  was 
stricken  out.  Ries  v.  Frick,  160  0.  G.  1040  (1910).  No- 
tice may  be  waived  by  conduct  of  attorney  who  might 
otherwise  successfully  urge  objections  to  the  notice. 
Munster  v.  Ashworth,  128  0.  G.  2085  (1906).  Objection 
to  the  insufficiency  of  notice  should  be  urged  at  the  earli- 
est opportunity,  or  it  will  be  deemed  to  have  been  waived. 

10 


Naulty  V.  Cutler,  126  0.  G.  389  (1906).  In  computing 
time  a  notice  served  on  Saturday  will  be  deemed  to  have 
been  served  on  Monday  at  the  same  hour,  for  counsel  can 
not  be  compelled  to  travel  on  Sunday,  even  if  no  objec- 
tion to  Sunday  travel  is  raised.  Goodfellow  v.  Jolly,  111 
0.  Gr.  1940.  Time  to  communicate  with  client  should  be 
given  counsel,  in  determining  whether  reasonable  time  is 
given.  Goodfellow  v.  Jolly,  111  0.  G.  1940.  Notice 
served  in  Chicago  to  take  testimony  in  Erie,  Pa.,  less 
than  two  days  thereafter,  is  not  reasonable  notice.  Tripp 
V.  Wolf  V.  Jones,  108  0.  G.  563. 

19.  Service  of  Notice.  The  notice  of  taking  testimony 
or  an}"  motion,  must  be  served  upon  the  attorney  of  rec- 
ord, if  there  be  one,  or,  if  there  be  no  attorney  of  record, 
upon  the  adverse  party.  A  stipulation  in  writing,  signed 
by  the  attorney's  and  filed  in  the  cause,  dispenses  with  the 
necessity  of  notice. 

20.  How  Served.  There  are  five  ways  of  serving  no- 
tices :  1,  by  delivering  a  copy  of  the  notice  to  the  ad- 
verse part}^  or  his  attorney;  2,  by  leaving  a  copy  at  his 
usual  place  of  business  and  with  some  one  in  his  employ- 
ment ;  3,  when  he  has  no  usual  place  of  business,  then  by 
leaving  a  copy  at  his  residence ;  4,  by  registered  mail, 
and  5,  by  express. 

21.  Notice  of  Motions,  Petitions,  Etc.  Notice  to  an  at- 
torney of  a  party  is  notice  to  him  whether  he  has  actual 
notice  or  not.  White  v.  Hewitt  £•  Nolen,  115  0.  G.  1847 
( ]  905 ) .  A  motion  will  not  be  entertained  when  no  notice 
was  served  on  opposing  partj^  Hansen,  117  0.  G.  2632 
(1905).  Like  notice  must  also  be  given  where  a  motion 
is  renewed.  Dyson  v.  Land,  etc.,  133  O.  G.  1679  (1908). 
Notice  of  petition  must  be  given.  BoMn  v.  Muller  & 
Bonnett,  107  0.  G.  2527  (1903).  Where  a  party  is  rep- 
resented by  more  than  one  attorney  of  record,  a  notice 
signed  by  one  of  them  is  sufficient.  Heyne,  Hayward  & 
McCarthy  v.  DeVilUss,  125  0.  G.  669  (1906) .  It  is  with- 
in the  discretion  of  the  Examiner  of  Interferences  to  dis- 

11 


pense  with  notice  of  a  motion  to  extend  time  for  filing 
preliminary  statement.  Keeler  v.  Bailey  v.  Davis,  14 
Gour.  82-1  (Dee.,  1902)  ;  Quick  v.  McGee,  107  0.  G. 
1376.  Copies  of  affidavits  must  be  served  five  days  be- 
fore the  hearing  unless  they  are  reply  affidavits,  in  which 
case  they  should  be  served  before  the  hearing.  Brown  v. 
Stroud,  122  0.  G.  2688.  In  all  cases  where  service  is  re- 
quired by  the  rules,  proof  of  service  must  be  made  under 
Rule  154.  Allen,  Commissioner,  127  0.  G.  2398'  (1907)  ; 
Lipe  V.  Miller,  105  0.  G.  1532  (1903). 

22.  Sufficiency  of  Notice.  A  notice  delivered  by  pri- 
vate messenger  on  Saturday  afternoon  to  the  office  of 
counsel,  notwithstanding  Saturday  afternoon  is  a  legal 
holiday  in  Washington,  is  good,  where  counsel  is  given 
ample  time  to  prepare  for  the  hearing,  and  it  appearing 
also  that  counsel  actually  received  the  notice  on  Monday 
afternoon.  Gooclfellow  v.  Jolly,  115  0.  G.  1064.  "Where 
the  attorneys  for  both  parties  resided  in  the  same  city 
and  notice  to  take  testimouj'  was  served  at  10  a.  m.  to 
take  testimony  at  2  p.  m.  of  the  same  day,  it  appearing 
that  the  attorne^^s  for  both  parties  appeared,  it  was  held 
that  the  testimony  should  not  be  stricken  out,  notwith- 
standing the  objection  in  the  record  of  insufficient  no- 
tice and  a  refusal  to  cross-examine.  liolyeris  v.  Webster, 
115  0.  G.  2135  (1905).  A  notice  given  in  New  York  City 
on  June  22,  that  testimony  would  be  taken  in  Troy,  N. 
Y.,  on  June  24,  was  held  insufficient.  Eanderson  v. 
Ilanna  &  Ilanna,  173  0.  G.  586  (1911).  An  affidavit  op- 
posing a  motion  to  dissolve,  served  four  days  before  the 
hearing  was  held  insufficient  notice.  Thieme  v.  Bowen, 
21  Gour.  70-13  (Aug.,  1909). 

ISSUES. 

23.  The  Issues.  The  issues  in  an  interference  are  the 
counts — tlie  claiiii  or  claims. 

The  Issue  Must  Remain  Fixed.  It  is  necessary  to  order- 
ly pi'occdiirc  IliJit  llic  issues  remain  fixed  throughout  the 

12 


interference  proceeding.  To  permit  a  party  to  change 
the  issue  by  adding  new  matter,  wouki  lead  to  the  great- 
est confusion.  Brill  c&  Adams  v.  Uehelocher,  99  0.  G. 
2966,  1902  C.  D.  220. 

24.  Construction  of  Issue — Terms  in  Claims  Should  Be 
Given  Their  Ordinary  Meaning-.  The  reasonable  presump- 
tion is  that  an  inventor  intends  to  protect  his  invention 
broadly,  and  the  scope  of  the  claims  should  not  be  re- 
stricted beyond  the  fair  and  ordinary  meaning  of  the 
words,  except  for  the  purpose  of  saving  them  from  in- 
validity. Andreivs  v.  Nilson,  123  0.  G.  1667;  Esch- 
inger  v.  Drummond,  etc.,  121  0.  G.  1348. 

25.  Claims  Broadly  Construed.  (See  Exception,  Sec. 
35.) 

While  the  applications  are  pending  in  the  Patent  Of- 
fice, the  claims  will  be  construed  as  broadly  as  the  ordi- 
nary meaning  thereof  will  permit.  Jungc  v.  Harrington, 
131  0.  G.  691;  Mid  v.  Young,  128  0.  G.  2532,  29  App. 
D.  C.  481;  Barber  v.  Transue,  19  Gour.  34-6;  Kirhy  v. 
Clements,  216  0.  G.  1319,  44  App.  D.  C.  12. 

Issue  Construed  as  Broadly  as  Disclosures  Warrant.  A 
limited  construction  should  not  be  forced  upon  a  broad 
claim  in  order  to  free  a  party  who  had  asserted  such 
claim  upon  the  supposition  that  he  was  the  first  in  the 
field,  from  the  exigencies  of  the  situation  into  which  he 
was  forced  by  the  subsequent  appearance  of  another 
partliy  who  created  the  broad  subject  matter  of  inven- 
tion of  an  earlier  date.  Viele  v.  Cummings,  19  Gour.  2-6 ; 
Monte  V.  Dunldey,  245  0.  G.  278. 

26.  Estoppel  to  Urge  Limitations  Upon  Issue.  A  party 
who  first  presents  claims  should  not  be  later  heard  to 
urge  limitations  upon  the  terms  thereof  which  might 
readily  have  been  expressed  therein,  had  it  been  intend- 
ed that  they  should  be  so  restricted.  Junge  v.  Harring- 
ton, 131  0.  G.  691;  Paul  v.  Hess,  113  0.  G.  847;  Leon- 
ard V.  Horton,  189  0.  G.  781,  40  App.  D.  C.  22. 

13 


27.  Language  of  the  Issue  Should  Not  Be  Given  a 
Forced  Meaning.  Nor  should  it  be  given  a  meaning 
founded  upon  specific  differences  in  the  devices  of  the 
parties  which  are  not  set  forth  in  the  issue.  Lemp  v. 
Randall  &  Bates,  123  0.  G.  349;  Phillips  v.  Sensenich, 
132  0.  G.  677  (1907). 

28.  Construction  Where  Applicant  Copies  Claims  of  a 
Patent.  AVhere  the  claims  of  a  patent  are  copied  for  the 
purpose  of  provoking  an  interference,  the  claims  are 
construed  in  the  light  of  the  specifications  of  the  patent. 
Bourn  v.  Hill,  123  0.  G.  1284,  27  App.  D.  C.  291 ;  Funk 
V.  Whitehj,  117  0.  G.  280,  2.5  App.  D.  C.  313 ;  Engel  v. 
Sinclair  et  al.,  152  0.  G.  489,  34  App.  D.  C.  212;  Curtis 
V.  de  Ferranti,  etc.,  171  0.  G.  215 ;  General  Electric  Co. 
V.  Steinherger,  214  Fed.  781,  206  0.  G.  1161. 

29.  Are  Construed  in  the  Light  of  the  Application  of 
the  Party  First  Making  Them.  Sohey  v.  HolscJilaw,  126  O. 
G.  3041,  28  App.  D.  C.  65;  Tracy  v.  Leslie,  14  App.  D. 
C.  126;  Ruete  v.  Elwell,  15  App.  D.  C.  21;  Neulerth  v. 
Lizotte,  141  0.  G.  1165,  32  App.  D.  C.  329;  Western 
Electric  Co.  v.  Martin,  182  0.  G.  723,  39  App.  D.  C.  147. 

30.  All  Elements  of  the  Claims  Must  Be  Assumed  to  Be 
Material.  Jones  v.  Wolff,  17  Gour.  52-8 ;  Collom  v.  Thur- 
man,  131  0.  G.  839 ;  Streat  v.  FrecJcelton,  87  0.  G.  695 ; 
Wilson  &  Forest  v.  Ellis,  211  0.  G.  286,  42  App.  D.  C. 
552;  Bijur  v.  Rushmore,  246  0.  G.  301,  46  App.  D.  C. 
395. 

31.  Different  Inventions  of  Different  Parties  Defined 
by  the  Same  Claims.  When  the  same  language  is  used  by 
different  parties  to  define  different  inventions,  it  is  clear 
that  the  language  of  the  claims  must  be  ambiguous  or 
indefinite,  and  should  be  amended  to  clearly  distinguish 
the  inventions  before  issue  of  patents  thereon.  Alfree 
V.  Sarver,  122  0.  G.  2391 ;  Podclsak  v.  Mclnnerney,  120 
0.  G.  2127,  26  App.  D.  C.  399. 

32.  Construction  in  New  Art.  A  limited  construction 
will  not  be  i)ut  ui)on  terms  of  a  chiim  where  it  appears 

14 


that  the  art  is  comparatively  new  and  the  terms  used 
have  not  ac(iiiired  a  fixed  and  definite  meaning  therein. 
Undmark  v.  Hodcjkinson,  137  0.  G.  228,  31  App.  D.  C. 
612. 

33.  Necessity  of  Considering  Prior  Art.  Where  the 
meaning  of  tlie  claims  of  an  interference  are  clear  and 
they  read  upon  both  parties,  it  is  not  error  to  refuse  to 
consider  the  effect  of  the  prior  art.  Creveling  v.  Jepson, 
256  0.  G.  226,  47  App.  D.  C.  597. 

34.  Vague  and  Indefinite  Counts.  If  the  claims  are  so 
vague  and  indefinite  as  to  be  susceptible  of  various  mean- 
ings, the  interference  should  be  dissolved,  or  the  claims 
amended  (Sec.  31).  Briggs  v.  Lillie,  etc.,  116  0.  G.  871 
(1904). 

35.  Exception  to  Broad  Interpretation.  Where  there 
is  a  clear  difference  in  the  structures  making  the  claims 
wholly  without  point  when  applied  to  one,  the  claims 
should  be  given  a  reasonable  interpretation,  consistent 
with  the  specification  in  which  they  originated  to  the  end 
that  the  real  inventor  may  prevail.  Murphy  v.  Cooper, 
228  0.  G.  1458,  45  App.  D.  C.  307.  They  cannot  be  con- 
strued so  as  to  ignore  limitations  which  give  them  life. 
Gammeter  v.  Lister,  253  0.  G.  259. 

Whether  a  Party  Has  the  Right  to  Make  the  Claim — 
Construction.  A  claim  should  be  given  the  broadest 
meaning  consistent  with  its  terms;  but  it  cannot  be  en- 
larged beyond  the  plain  import  thereof  as  set  forth  in 
the  specification  on  which  it  is  based.  Sinclair  v.  Engel, 
147  0.  G.  769,  1909,  152  0.  G.  489,  34  App.  D.  C.  212. 

Different  Parties  Use  Different  Terms  to  Describe  Same 
Structure.  It  is  immaterial  that  the  parties  use  different 
terms  to  describe  the  same  structure.  Pratt  v.  De  Fer- 
ranti,  etc.,  148  0.  G.  569. 

THE  PRELIMINARY  STATEMENT. 

36.  Filing  of  Preliminary  Statement.  After  the  issues 
of  an  interference  have  been  fixed,  the  next  step  required 

15 


of  a  party  is  to  file  a  preliminary  statement.  The  office 
fixes  the  time  within  which  the  parties  shall  file  their 
statements.  What  a  preliminary  statement  shall  contain 
is  set  forth  in  detail  in  Rule  110.  The  statement  should  be 
prepared  with  great  care  for  it  is  very  difficult  to  obtain 
leave  to  amend.  The  rule  itself  contains  a  caution  to 
the  practitioner  that  the  statement  should  be  carefully 
prepared  and  that  the  parties  will  be  strictly  held  in 
their  proofs  to  the  dates  set  up  therein.  If  a  party  prove 
any  date  earlier  than  alleged  in  his  preliminary  state- 
ment, such  proof  will  be  held  to  establish  the  date  al- 
leged and  none  other.  The  statement  must  be  sealed  up 
before  filing  (to  be  opened^only  by  the  Examiner  of  In- 
terferences as  provided  in  Rule  111),  and  the  name  of 
the  party  filing  it,  the  title  of  the  case,  and  the  subject 
matter  of  the  invention  indicated  on  the  envelope.  The 
envelope  should  contain  nothing  but  this  statement. 

Reasons  for  Requiring-  a  Preliminary  Statement.  The 
Preliminary  statement  is  made  in  ignorance  of  the  dates 
claimed  by  the  opposing  party,  and  this  is  required  for 
the  purpose  of  avoiding  the  temptation  to  fraud.  If  a 
party  could  make  his  statement  after  knowing  the  date 
of  invention  claimed  by  his  opponent,  there  would  be 
strong  temptation  to  fraud  and  perjur3\  Davis  v.  Ocum- 
paugh  V.  Garrett,  104  0.  G.  2440  (1903)  ;  Woodward  v. 
Kennedy,  104  0.  G.  1393  (1903). 

37.  What  Statement  Must  Contain.  The  allegations  of 
the  statement  must  conform  to  Rule  110,  hence  a  state- 
ment that  the  inventor  reduced  the  invention  to  practice 
by  constructing  the  devise,  witliout  any  allegation  as  to 
its  successful  use,  is  insufficient.  Ordinarily  an  inven- 
tion is  not  reduced  to  practice  by  merely  constructing 
the  devise.  The  fact,  if  it  be  a  fact,  that  the  invention 
is  of  such  nature  that  no  test  of  its  practicability  is  re- 
(|uired,  will  appenr  on  finnl  hearing,  but  a  party  may  not 
be  excused  from  alleging  the  use  which  he  has  made  of 
his  devise,  merely  because  he  believes  he  is  not  required 

16 


to  prove  use.  Klochc  v.  Burk,  189  0.  G.  779,  1913  C.  D. 
85;  Williams  v.  Foijcr  cO  Kurz,  142  0.  G.  1114  (1909). 
Loose  and  careless  assertions  tend  to  discredit  the  state- 
ment. Miles  V.  Todd,  112  0.  G.  1479.  The  allegations 
must  be  clear  and  complete.  Shoemaker  v.  Sintz,  123 
0.  G.  2974  (1906).  Inconsistent  allegations  will  not  be 
accepted.  RoMnson  v.  Copdand,  112  0.  G.  501,  24  App. 
D.  C.  68;   Guett  v.  Trengoning,  114  0.  G.  544. 

38.  Who  May  Sign  Statement.  The  inventor  is  of 
course  the  proper  party  to  sign  the  preliminary  state- 
ment, but  if  he  refuses  to  do  so,  an  assignee  may  sign  and 
file  the  statement.  Reynolds  v.  Bean,  100  0.  G.  1763, 
1902  C.  D.  307;  Lottridge  v.  Eustice,  121  0.  G.  689 
(1906).  Upon  a  proper  shoMdng  an  assignee  of  only  a 
part  interest  may  file  under  Rule  131.  Lotterhand  v. 
Cornwall,  148  0.  G.  1344  (1909). 

39.  Motions  for  Extension  of  Time  for  Filing — How 
Made.  This  motion  should  be  made  in  accordance  with 
Rule  104.  The  motion  should  state  the  reasons  for  ask- 
ing the  extension.  It  must  be  verified,  a  copy  served  on 
the  other  party  or  parties  or  their  attorneys,  together 
with  a  notice  of  the  time  of  hearing  of  such  motion  and  a 
proof  of  service  of  a  copy  of  the  motion  and  notice  of 
hearing  should  be  filed  with  the  motion.  The  granting 
of  the  motion  is  within  the  discretion  of  the  examiner. 
Bailey  v.  Davis,  102  0.  G.  819  (1903)  ;  Ohnier  v.  Neth 
d-  Tamplin,  118  0.  G.  1686  (1905),  123  0.  G.  998  (1906), 
27  App.  D.  C.  319.  The  motion  should  state  a  definite 
time  of  extension  asked  for,  or  it  will  be  refused.  Kecch 
V.  Birmingham,  191  0.  G.  2825. 

40.  Time  for  Filing  Statement.  Where  a  party  is  un- 
able to  prepare  his  preliminary  statement  within  the  time 
fixed,  it  is  his  duty  to  present  the  facts  to  the  office  and 
ask  for  an  extension  of  time,  before  he  is  in  default,  or 
as  soon  as  possible.  Fowler  v.  Boyce,  etc.,  107  0.  G.  543 
(1903). 

Filed  After  Expiration  of  Time.     A  preliminary  state- 

17 


ment  filed  nine  days  after  time  expired,  was  accepted, 
reasonable  diligence  in  procuring  the  necessary  data  hav- 
ing been  shown.    Charlton  v.  Sheldon,  111  0.  G.  2492. 

41.  Circumstances  Warranting  Extension.  It  is  not 
possible  to  state  any  rule  as  to  what  circumstances  vsdU 
warrant  an  extension,  for  each  case  must  rest  upon  its 
own  facts.  A  party  must  at  all  times  act  in  good  faith ; 
he  must  not  be  careless  or  negligent ;  he  must  exercise 
reasonable  diligence  in  preparing  his  statement  and  he 
must  not  seek  to  take  advantage  of  his  opponent.  Dodle 
V.  Eckart  v.  Henry,  110  0.  G.  604.  "Where  it  appears 
from  the  showing  made  that  a  party,  his  assignee,  or  his 
counsel,  or  all  of  them,  have  been  negligent  or  careless 
in  the  matter  of  preparing  and  filing  his  preliminary 
statement,  an  extension  of  time  will  be  denied.  Ander- 
son V.  Peck,  133  0.  G.  229,  1908  C.  D.  66 ;  Hartleij  v. 
Mills,  110  0.  G.  604. 

42.  New  Counts  Added — New  Statement  Should  Be 
Filed.  Where  new  counts  are  added,  additional  prelim- 
inary statements  applying  to  the  new  counts  should  be 
filed.    Halwood  v.  Mc'Cormick,  16  Gour.  84-9. 

43.  A  Preliminary  Statement  May  Be  Taken  as  a  Sub- 
stitute for  an  Affidavit  Under  Eule  75.  Forsyth  v.  Rich- 
ards, 115  0.  G.  1327. 

44.  Allegations  as  to  Reduction  to  Practice.  If  merely 
making  the  device  is  alleged  it  must  be  .stated  whether 
such  device  was  successfully  used.  Klocke  v.  Burk,  189 
0.  G.  779  (1913). 

Allegations  as  to  Time.  ' '  In  the  early  spring  of  1900 ' ' 
means  not  earlier  at  the  utmost  than  March  1,  1900. 
Richards  v.  Meisner,  114  0.  G.  1831. 

45.  Inspection  of  by  Opposing  Parties.  The  rules  pro- 
vide that  where  preliminary  statements  are  filed  and  ap- 
I)roved,  the  opposing  parties  will  be  permitted  to  see  and 
obtain  copies  of  their  opponents  applications  and  all  of 
the  papers  in  the  case'  and  to  make  motions  for  dissolu- 

18 


tion  within  30  days  (Rule  122).     Whipple  v.  Sharp,  98 
0.  G.  226,  1902  C.  D.  5. 

46.  Amendment  of  Preliminary  Statement.  A  pre- 
liminary statement  may  be  amended  under  Rule  113, 
which  provides :  "In  ease  of  material  error  arising 
through  inadvertence  or  mistake,  the  statement  may  be 
corrected  on  motion  (see  Rule  155),  upon  a  satisfactory 
showing  that  the  correction  is  essential  to  the  ends  of 
justice.  The  motion  to  correct  the  statement  must  be 
made,  if  possible,  before  the  taking  of  any  testimony,  and 
as  soon  as  practicable  after  the  discovery  of  the  error. ' ' 

Permission  to  Amend  is  Within  the  Discretion  of  the 
Commissioner  (or  the  Examiner  of  Interferences  in  the 
first  instance).  The  rule  requiring  preliminary^  state- 
ments is  a  salutarA^  one,  its  obvious  object  being  to  elicit 
from  each  of  the  parties  certain  vital  information  before 
any  party  is  informed  as  to  the  statement  of  any  other. 
Owing  to  the  purpose  of  the  rule,  the  exercise  of  the 
Commissioner's  discretion  in  passing  upon  motions  to 
amend  such  statements  will  not  be  disturbed  unless  it  is 
plain  that  there  has  been  an  abuse  of  that  discretion. 
Thomas  v.  Wemtraul),  177  0.  G.  772,  38  App.  D.  C.  281 ; 
Brotvn  v.  Dyson  &  Land,  188  0.  G.  809,  39  App.  D.  C. 
415 ;  Hammond  v.  Basch,  115  0.  G.  804,  24  App.  D.  C. 
469;  Cross  v.  Phillips,  14  App.  D.  C.  228,  237,  238; 
Neth  &  Tamplin  v.  Ohmcr,  123  0.  G.  998  (1906),  27  App. 
319. 

It  is  within  the  discretion  of  the  Examiner  of  Inter- 
ferences to  permit  amendment.  Karpenstein  v.  Hertz- 
lerg,  127  0.  G.  2393  (1907)  ;  Klenk  v.  Kruse,  177  0.  G. 
1300  (1912)  ;  Cramer  cO  Hodge  v.  Carrier,  177  0.  G.  769 
(1912). 

47.  What  the  Motion  Must  Show.  It  is  not  sufficient 
to  show  merely  that  the  original  statement  is  incorrect, 
but  it  must  also  be  shown  that  the  error  did  not  arise 
from  lack  of  proper  care  and  diligence  in  preparing  the 
statement.    Becker  v.  Currier,  104  6.  G.  2439  (1903). 

19 


Not  merely  a  statement  that  the  error  was  due  to  inad- 
vertence and  mistake,  but  a  showing  of  facts  which  will 
enable  the  office  to  judge  that  there  was  inadvertence  or 
mistake  and  that  amendment  is  essential  to  the  ends  of 
justice.    Brown  v.  Keeney,  105  0.  G.  260  (1903)  ;  Brown 
V.  Cutler  V.  Keelen,  104  0.  G.  1896.    Where  it  is  alleged 
that  the  mistake  is  due  to  not  understanding  the  meaning 
of  "reduction  to  practice,"  it  was  held  that  it  was  the 
party's  duty  to  discover  the  meaning  of  the  allegations 
which  he  made,  or  ascertain  the  meaning  from  his  attor- 
ney.   Dimn  V.  Hollidaij,  119  0.  G.  1261  (1905).    Where 
a  party  alleges  that  he  stated  the  facts  in  his  original 
statement  as  he  believed  them  to  be  and  subsequently 
discovered  his  error,  it  must  also  appear  that  he  could 
not  have  discovered  the  facts  sooner  by  careful  and  dili- 
gent search.    Hamilton  v.  Carroll,  etc.,  110  0.  G.  2510. 
Where  it  is  alleged  that  an  assignee  accepted  the  state- 
ment of  an  associate  of  the  inventor,  it  must  also  be 
shown  that  he  made  diligent  effort  to  ascertain  the  facts 
from  others  who  would  likely  know  the  facts.    Hamilton 
V.  Carroll,  etc.,  110  0.  G.  2510.    Where  it  is  alleged  that 
a  party  when  preparing  to  take  testimony  learned  of  an 
earlier   disclosure   than  that  alleged  in  his   statement, 
there  must  also  be  shown  a  good  reason  for  not  discover- 
ing the  fact  sooner.    Foivler  v.  Boyce,  etc.,  108  0.  G.  561. 
Where  a  party  seeks  to  amend  by  showing  the  making  of 
a  model,  he  must  show  a  satisfactory  reason  for  omitting 
it  from  the  original  statement,  and  also  a  good  excuse  for 
delay  in  l)ringing  the  motion.    Fullager  v.  Jungrcn,  114 
0.  G.  1550.     Where  forgetfulness  is  alleged  it  must  be 
shown  what  effort  was  made  to  refresh  the  affiant's  recol- 
lection originally  or  what  steps  were  taken  to  fix  definite- 
ly the  dates  alleged.    Friestcdt  v.  Harold,  116  0.  G.  594 
(1905).     It  must  not  only  appear  that  there  was  error 
in  Ihc  original  statement,  but  that  such  error  could  not 
have  been  avoided  by  the  exercise  of  reasonable  care  in 
the  i)rt'|)aration  of  the  statement.     NctJi  &  Tamplin  v. 

20 


Ohmer,  IIG  0.  G.  874  (1905).  A  party  must  not  only 
show  diligence  in  discovering  the  facts,  but  also  diligence 
in  bringing  the  motion  to  amend.  Hock  v.  Hopkins,  21 
Gour.  (57  (Aug.,  1909). 

48.  Insufficient  Showing-.  A  showing  to  support  a  mo- 
tion to  amend  a  preliminary  statement  must  be  such  as 
to  make  it  appear  clearly  that  the  error  in  the  original 
statement  could  not  have  been  avoided  by  the  exercise  of 
reasonable  care  in  preparing  it.  A  showing  is  insuffi- 
cient to  warrant  amendment  setting  back  the  date  of 
conception  and  reduction  to  practice,  where  the  moving 
party  files  his  motion  after  learning  of  his  opponent's 
dates  and  he  fails  to  set  forth  fully  the  reason  he  was 
unable  to  learn  of  and  set  forth  the  earlier  dates  in  the 
first  instance.  Neth  &  Templin  v.  Ohmer,  116  0.  G.  874 
(1905).  Since  a  party  must  show  due  diligence  in  pre- 
senting the  motion,  a  showing  that  the  delay  was  occa- 
sioned by  negotiations  for  settlement  is  not  a  sufficient 
excuse  for  such  delay.  Bradley  v.  Midgett,  150  0.  G. 
1042,  1910  C.  D.  24.  A  showing  is  insufficient  when  it 
is  not  made  to  appear  that  due  diligence  was  exercised 
to  ascertain  the  true  facts  alleged  to  have  been  erroneous- 
ly stated,  or  omitted.  Hock  v.  Hoplins,  21  Gour.  67 
(Aug.,  1909).  Showings  are  also  insufficient  in  the  fol- 
lowing instances :  Where  one  seeks  to  carry  his  dates 
back  of  his  opponent's  dates,  but  no  good  reason  is  shown 
why  the  correct  dates  were  not  discovered  and  alleged 
originally.  Freistedt  v.  Harold,  116  0.  G.  594  (1905). 
Where  the  motion  is  upon  the  ground  of  newly  discov- 
ered evidence  from  a  proposed  witness  and  it  does  not  ap- 
pear  why  the  facts  were  not  discovered  before.  McHarg 
V.  Schmidt  &  Mayland,  105  0.  G.  263  (1903).  Where 
the  ground  was  newly  discovered  evidence  and  it  is  al- 
leged that  a  search  for  certain  evidence  in  the  past  was 
not  successful,  but  no  satisfactory  explanation  is  given 
why  the  search  could  not  have  been  completed  in  time 
for  the  original  statement  instead  of  after  learning  his 

21 


opponent's  dates.  Hoyt  v.  Banders  v.  Hawthorne,  119 
0.  G.  1260  (1905).  Where  it  was  alleged  that  a  mistake 
was  made  by  the  inventor  as  to  what  was  meant  by  ''re- 
duction to  practice,"  but  there  was  no  explanation  of 
what  the  mistake  was,  or  how  it  arose,  and  the  dates  he 
desires  to  allege  are  not  given.  Fowler  v.  Boyce,  etc.,  107 
0.  G.  544  (1903).  Where  it  is  not  shown  that  the  party 
informed  his  attorneys  of  all  the  facts,  and  it  is  not 
shown  that  he  used  the  utmost  diligence  in  trying  to  find 
the  alleged  new  evidence  before  making  his  preliminary 
statement.  Seeherger  v.  Russell,  107  0.  G.  2528  (1903). 
Where  a  party  discovers  the  error  in  his  original  state- 
ment and  makes  no  effort  for  a  long  time  to  discover  the 
true  facts  and  does  not  use  diligence  in  presenting  his 
motion  to  amend.  Atkins  v.  Paul  v.  Johnson,  94  0.  G. 
1785,  1901  C.  D.  35.  AVhere  a  party  in  making  his  pre- 
liminary statement  was  aware  of  the  facts,  but  not  of  the 
force  and  effect  thereof.  Thomas  v.  Trissell,  1901  C.  D. 
200,  97  0.  G.  1598 ;  Franklin  &  Norton  v.  Cooley)  1901 
C.  D.  49,  95  0.  G.  2063 ;  where  the  facts  alleged  show 
that  the  error  was  one  of  law  and  not  of  fact.  Dalgren  v. 
Crocker,  98  0.  G.  2586,  1902  C.  D.  107 ;  Miller  v.  Wal- 
lace, 131  0.  G.  1689  (1903)  ;  Bonsall  v.  Gilmore,  16 
Gour.  82-3;  Fowler  v.  Boyce,  etc.,  108  0.  G.  561.  Where 
a  party  makes  up  his  preliminary  statement  from  mem- 
ory and  after  looking  up  the  records  discovers  that  he 
made  a  mistake.  King  v.  Hansen,  101  0.  G.  1129,  1902 
C.  D.  378.  Where  a  party  states  that  the  utmost  dili- 
gence was  exercised  in  making  the  discovery  of  the  new 
facts,  without  stating  what  means  were  employed  and 
the  reasons  why  the  same  means  could  not  have  been 
earlier  employed.  Seamen  v.  Brooks,  100  0.  G.  685,  1902 
C.  D.  267.  Where  there  is  no  reason  shown  why  the 
question  could  not  have  been  considered  in  the  first 
amendment.  Borg  v.  Strauss,  130  0.  G.  2719  (1907). 
Where  there  is  no  showing  that  proper  care  was  exer- 
cised in  preparing  the  original  statement  and  no  expla- 

22 


uatiou  as  to  how  the  original  mistake  occurred,  or  why 
it  was  not  sooner  discovered.  Jolinson  v.  Erekson,  etc., 
131  0.  G.  2419  (1907).  A  motion  based  on  acts  per- 
formed abroad  will  not  be  considered  as  any  reason  for 
amendment.  Emmet  v.  Fullager,  114  0.  G.  1551.  A 
failure  to  appreciate  the  scope  of  the  claims  is  an  error 
of  law  and  is  no  ground  for  amendment.  liyder  v.  White, 
145  0.  G.  763  (1909).  Where  on  account  of  the  press  of 
business  a  party  fails  to  investigate  letters  and  records. 
Somerville  v.  Larmuth,  190  0.  G.  1028  (1913).  AVhere 
the  motion  is  based  on  statements  made  to  a  prior  attor- 
ney of  record  and  no  affidavit  from  that  attorney  is  filed. 
Rechmitzer  v.  Bernegan,  193  0.  G.  512  (1913).  Where 
the  error  is  alleged  to  have  been  due  to  a  misunderstand- 
ing of  a  telephone  conversation.  Ileintish  &  Moriarity  v. 
Congdon  v.  Kclsca,  106  0.  G.  542  (1903).  W^here  the 
showing  indicates  carelessness  and  negligence  in  prepar- 
ing the  original  statement.  Basch  v.  Hammond,  15  Gour. 
34-4  (May,  1903).  Where  the  error  occurred  by  reason 
of  the  attorney  being  engaged  in  other  pressing  work. 
Jones  V.  Linn,  110  0.  G.  1430. 

49.  Amendments  Have  Been  Permitted.  Amendments 
have  been  permitted  under  the  following  circumstances: 

Where  the  notice  of  declaration  was  not  clear.  Hoeker 
V.  Farr,  193  0.  G.  220  (1913).  Where  there  was  doubt 
as  to  a  certain  part  of  a  machine  involved,  and  no  testi- 
mony had  been  taken.  Carroll  v.  Stahlherg,  111  0.  G. 
1937.  Where  the  affidavit  of  the  inventor  was  corrob- 
orated by  another  and  it  was  shown  that  due  care  and 
diligence  was  exercised  in  the  preparation  of  the  orig- 
inal statement,  and  that  a  bona  fide  mistake  was  made. 
Butterworth  v.  Boral,  etc.,  13  Gour.  2-1  (Jan.,  1901). 
Where  a  party  acted  mth  diligence  in  discovering  the 
mistake  and  moved  to  amend  before  any  testimony  had 
been  taken,  and  was  diligent  in  preparing  the  original 
statement,  and  that  the  amendment  would  not  injure  the 
other  party.    Silver  v.  Eustis,  14  Gour.  4-8  (Jan.,  1902). 

23 


Where  there  was  a  bona  fide  mistake  due  merely  to  a 
clerical  error,  and  there  had  been  no  unreasonable  dela}'. 
Hamilton  v.  Ide  v.  Loiventhal,  U  Gour.  4-9  (Feb.,  1902). 
AVliere  there  was  a  bona  fide  misapprehension  as  to  the 
sense  in  which  the  word  "model"  was  used.  Day  v.  Adt 
I'.  Hurdy,  12.3  0.  G.  2765  (]906).  Where  the  failure  to 
recall  the  early  disclosure  was  due  to  illness.  Paul  v. 
Chapin,  187  0.  G.  831.  Where  the  grounds  of  amend- 
ment were  based  on  records  in  the  Patent  Office.  Cramer 
&  Hodge  v.  Carrier,  177  0.  G.  769  (1912).  Where  there 
was  no  attempt  made  to  change  the  dates  and  it  was 
shown  that  it  would  not  injure  the  opposing  party.  Wil- 
liams V.  Liherman,  100  0.  G.  1331,  1902  C.  D.  295. 
Where  a  party  showed  prior  diligence  in  making  his  orig- 
inal statement  and  also  made  his  motion  to  amend  before 
any  testimony  had  been  taken  and  there  would  be  no  ad- 
ditional burden  or  expense  thrown  upon  the  opposing 
party.  McDermott  v.  Hihlreih,  98  0.  G.  1282,  1902  C. 
D.  43.  Where  no  testimony  had  been  taken  and  the 
amendment  would  not  carry  the  date  of  reduction  to 
practice  back  of  his  opponent's,  and  a  reasonable  excuse 
is  presented  for  delay  in  presenting  the  amendment. 
Gales  V.  Berrigau,  100  0.  G.  232,  1902  C.  D.  232.  Where 
the  ground  was  an  accidental  discovery  of  a  publication 
referring  to  the  invention,  and  this  publication  was  not 
discovered  when  the  original  statement  was  filed,  al- 
though a  careful  search  had  been  made.  Davis  v.  Ocum- 
paufjh  V.  Garrett,  104  0.  G.  2440  (1903). 

The  Examiner  of  Interferences  May  Require  Amend- 
ment. Allyn  cO  Turner  v.  Anics,  21  Gour.  66-6  (Sept., 
1909). 

50.  Amendment  After  Taking  Testimony.  After  testi- 
mony has  been  taken,  an  amendment  to  set  back  dates  set 
forth  in  preliminary  statement  is  open  to  suspicion  and 
will  be  received  only  upon  a  clear  showing  of  mistake, 
and  the  moving  party  must  be  free  from  negligence,  and 
must  show  the  utmost  diligence  in  seeking  to  correct  the 

24 


mistake.  McDermott  v.  Ilildreth,  98  0.  G.  1282,  1902  C. 
D.  43;  Pope  V.  Minis  v.  McLean,  104  0.  G.  2147  (1903)  ; 
Ilenclerson  v.  Noakes,  1892  C.  D.  114,  59  0.  G.  1431 ; 
Bliss  V.  Cleverling,  112  0.  G.  499.  Changing-  the  date  of 
reduction  to  practice  will  not  be  permitted  where  there  is 
no  showing  of  the  utmost  diligence  in  preparing  the 
original  statement.  Lockwood  v.  Schmidt,  100  0.  G.  453, 
1902  C.  D.  253 ;  Parker  v.  Lewis,  110  0.  G.  305.  A  claim 
that  the  part}'  making  the  statement  did  not  understand 
the  terms  used,  is  not  sutficient.  Parker  v.  Lewis,  110  0. 
G.  305.  That  a  party  did  not  read  all  of  the  counts  is 
no  excuse.  Smith  v.  Ingram,  131  0.  G.  2420  (1907).  A 
showing  that  a  party  made  an  investigation  as  to  certain 
facts  before  making  his  original  statement,  but  which 
failed  to  show  that  he  exhausted  every  reasonable  means 
of  obtaining  the  desired  information,  is  not  sufficient  to 
warrant  amendment.  Floyd  v.  Bohlfing,  133  0.  G.  992 
(1908).  A  motion  based  on  testimony  taken  in  a  case 
must  point  out  the  particular  parts  of  the  testimony 
upon  which  he  relies  to  sustain  his  motion.  Floyd  v. 
Rohlfiiig,  133  0.  G.  992.  Where  the  opposing  party  had 
not  completed  the  taking  of  his  testimony  and  the  mo- 
tipn  was  based  upon  an  accidental  discovery  of  an  ex- 
hibit which  w^as  dated  at  an  earlier  date  than  that  set 
forth  in  the  preliminary  statement,  and  other  affidavits 
were  filed  by  parties  who  stated  that  they  saw  the  exhibit 
on  the  date  alleged,  and  it  further  appearing  that  the 
moving  party  had  made  diligent  search  for  all  of  his 
drawings  previous  to  making  his  original  statement, 
amendment  was  permitted.  Brening  v.  Ridgely,  19  Gour. 
65-2  (Aug.  5,  1907).  A  party  may  not  give  notice  of 
intention  to  amend  and  then  delay  in  presenting  his  mo- 
tion until  his  opponent  has  completed  taking-  his  testi- 
mony. Green  v.  Farley,  132  0.  G.  235  (1907).  Where 
a  party  discovers  a  mistake  in  his  preliminary  statement, 
he  must  act  prompt^  to  correct  it,  and  if  there  is  any 
delay,  he  must  show  a  satisfactory  excuse  for  the  delay. 

25 


Kent  V.  Wilson,  etc.,  137  0.  G.  1943 ;  Anderson  v.  Nilson, 
105  0.  G.  2059  (1903).  A  notice  of  intention  to  move 
to  amend,  given  during-  the  taking  of  testimony,  must  be 
exact  and  explicit  as  to  what  amendment  is  to  be  made. 
Kent  V.  Wilson,  etc.,  137  0.  G.  1943.  Where  a  party 
doubted  the  accuracy  of  his  original  statement  at  the 
time  he  made  it,  but  made  no  thorough  search  for  the 
true  facts,  amendment  was  denied.  WJiitall  v.  Gillespie 
V.  Blaw,  171  0.  G.  744  (1911).  The  fact  that- a  party 
did  not  fully  appreciate  the  effect  certain  evidence  woufd 
have  upon  the  issue,  but  knew  of  the  existence  of  the 
evidence  at  the  time  he  made  his  original  statement, 
would  not  entitle  him  to  amend.  Thomas  v.  Trissel,  97 
0.  G.  1598,  1901  C.  D.  200.  Where  a  party  discovers 
a  mistake  in  his  preliminary  statement  and  thereafter 
permits  his  opponent  to  take  and  file  his  testimony  with- 
out giving  notice  to  amend,  the  motion  will  be  denied. 
Mills  V.  Torrence,  98  0.  G.  416,  1902  C.  D.  17.  In  pass- 
ing upon  a  motion  to  amend  the  Examiner  of  Interfer- 
ences will  not  try  the  question  of  whether  the  allegations 
in  the  motion  are  true  or  false,  before  granting  or  deny- 
ing the  motion.  Mills  v.  Torrence,  98  0.  G.  416.  To 
warrant  amendment  after  the  testimony  has  been  taken, 
the  ground  being  newly  discovered  evidence,  it  must 
clearly  appear  that  the  evidence  could  not  have  been 
discovered  at  the  time  of  the  filing  of  the  original  state- 
ment. Fordyce  v.  Taisey,  102  0.  G.  821  (1903).  Where 
a  party  seeks  to  carry  his  date  of  conception  back  ten 
3'ears,  basing  his  motion  upon  testimony  taken  in  his  own 
behalf,  the  motion  will  be  denied  in  the  absence  of  any 
sufficient  reasons  why  the  facts  were  not  discovered  at 
the  time  his  original  statement  was  filed.  Woodward  v. 
Kennedy,  104  0.  G.  1393  (1903).  Even  where  the  testi- 
mony shows  clearly  that  a  mistake  was  made  in  the  pre- 
liminary statement,  the  amendment  will  not  be  permitted 
in  the  abseiice  of  a  showing  of  due  care  in  making  the 
original  statement.     Woodward  v.  Kennedy,  104  0.  G. 

26 


1393.  Where  a  party  had  been  notified  that  his  state- 
ment was  indefinite,  but  no  motion  to  amend  was  filed 
until  eight  months  later  and  after  his  opponent  had 
taken  his  testimony,  and  no  satisfactory  excuse  given  for 
the  delay,  he  was  not  entitled  to  amend.  Dixon  v.  Mc- 
Elroy,  127  0.  G.  2393  (1907). 

61.  Motions  to  Amend  When  Reviewable.  Considera- 
tion of  motions  to  amend  may  be  postponed  until  final 
hearing  in  which  case  the  decision  of  the  Examiner  of 
Interferences  is  reviewable  by  the  examiners  in  chief. 
Gammeter  v.  Thropp,  190  0.  G.  266  (1913)  ;  Forsherg 
V.  Bradbury,  177  0.  G.  239  (1912). 

AMENDMENT  OF  ISSUE. 

52.  Adding — Counts — Rule  109.  After  an  interfer- 
ence has  been  declared,  it  often  becomes  important  to 
add  new  counts  to  an  interference.  This  may  be  done  at 
any  time  within  thirty  days  after  the  preliminary  state- 
ments of  the  parties  have  been  filed  and  approved.  One 
who  desires  to  add  new  counts  should  make  a  motion  to 
amend  in  accordance  with  Rule  109  and  Rule  153,  the 
latter  rule  applying  to  giving  notice  of  the  motion  to  the 
opposing  parties,  service  of  copies  and  proof  of  service. 
The  procedure  should  follow  Rule  124  as  amended  May 
7,  1914,  which  though  apphing  to  motions  to  dissolve, 
has  been  held  to  be  applicable  and  the  proper  practice 
on  motions  to  add  counts.  Tow  mend  v.  Copeland  v. 
Robinson,  126  0.  G.  1355  (1907). 

The  motion  to  amend  the  application  should  contain 
the  claim  or  claims  wdiich  the  moving  party  believes 
should  be  made  the  basis  of  interference  between  himseK 
and  the  other  parties.  It  should  contain  a  statement  that 
it  is  believed  the  claims  are  patentable  and  should  be 
made  an  issue  in  the  interference,  and  it  should  be  point- 
ed out  specifically  wherein  the  claims  w'hich  it  is  desired 
to  add  are  applicable  to  the  structure  of  each  of  the  par- 
ties, and  must  not  be  conditional  or  with  a  proviso. 

27 


Ames,  Jr.,  v.  Ryan,  238  0.  G.  1639  (1917)  ;    Wheeler  v. 
Palmros,  133  0.  G.  230  (1908). 

The  purpose  of  Rule  109  is  to  enable  a  party  to  claim 
a  patentable  invention  which  he  shows  and  describes, 
but  has  not  claimed,  and  which  the  opposing  party  has 
claimed.  Perrussel  v.  Wickmann,  99  O.  G.  2970,  1902 
C.  D.  228.  A  further  purpose  of  the  rule  is  that  an  in- 
terference may  be  made  to  completely  cover  the  patent- 
able invention  which  is  common  to  the  applications  in- 
volved. Reece  v.  Fenivick,  97  0.  G.  188,  1901  C.  D.  143. 
And  to  avoid  a  second  interference.  Townsend  v.  Cope- 
land  V.  Robinson,  126  0.  G.  1355  (1907). 

Since  it  is  the  purpose  of  Rule  109  to  give  a  party  to 
an  interference  full  opportunity  to  put  in  issue  matter 
which  he  may  think  patentable  or  common  to  the  inter- 
ference applications,  but  which  was  not  included  in  the 
interference  as  originally  declared,  if  he  fails  to  take 
"^  advantage  of  this  rule  while  the  interference  is  pending, 

^  .  he  is  estopped  thereafter  from  presenting  broader  claims. 

(iJar^/n  re  Capen,  214  0.  G.  685,  43  App.  D.  C.  342;  Capen, 
214  0.  G.  683  (1914)  ;  Sutton,  Steele  &  Steele,  121  0.  G. 
1012  (1906). 

53.  An  Appeal  May  Be  Taken  from  the  decision  of  the 
Law  Examiner  refusing  a  motion  to  amend,  to  the  Ex- 
aminers in  Chief  in  the  first  instance,  but  the  appeal 
must  be  inter  partes.  Rule  124.  Since  the  amendment 
of  Rules  109  and  124,  May  7,  1914,  when  a  motion  to 
amend  is  made,  if  found  in  proper  form,  it  will  be  trans- 
mitted by  the  Commissioner  to  the  Law  Examiner  and  if 
the  Law  Examiner  renders  an  adverse  decision,  he  shall 
fix  a  limit  of  appeal,  not  less  than  twenty  days,  for  ap- 
peal to  the  Examiners  in  Chief,  and  if  the  appeal  is  not 
taken  witliin  the  time  fixed  by  the  Law  Examiner  it  will 
not  be  heard  except  by  permission  of  the  Commissioner. 
In  Townsend  v.  Copcland  v.  Robinson,  126  0.  G.  1355 
(1907),  it  was  held  that  the  reasons  which  led  to  the 
change  in  Rule  124,  .set  forth  in  Newcomb  v.  Thompson 

28 


(122  0.  G.  3012),  apply  with  nearly  the  same  force  to 
motions  under  Rule  109,  hence  it  was  held  that  the 
proper  practice  was  to  follow  the  procedure  under  Rule 
124.  The  reason  for  allowing  such  appeal  is  that  a  final 
adverse  decision  rendered  on  such  motion  would  obvious- 
ly constitute  ground  for  refusing  such  claims  presented 
after  the  conclusion  of  the  interference.  Mortimer  v. 
Thomas  v.  Broicnson,  192  O.  G."215  (1913). 

54.  When  Motion  Must  Be  Made.  Rule  109  provides 
that  a  motion  to  amend  may  be  made  at  any  time  within 
thirty  days  after  the  preliminary  statements  of  the  par- 
ties have  been  received  and  approved.  However,  for 
various  reasons,  motions  have  been  presented  long  after 
the  thirty  days'  limit  therein  stated,  hence  there  have 
been  many  rulings  applying  to  the  particular  facts  pre- 
sented. 

55.  Reopening  Interference  to  Amend  Issue.  After 
the  expiration  of  the  time  allowed  for  bringing  motions, 
and  after  a  decision  of  the  Law  Examiner  on  a  motion  to 
dissolve  has  become  final,  the  interference  will  not  be  re- 
opened to  amend  the  issues,  especially  where  there  is  no 
valid  excuse  shown  for  delay  in  bringing  the  motion. 
Ignorance  of  the  provisions  of  Rule  109  is  no  excuse. 
Kimball  v.  Sharpies,  21  Gour.  68-10  (Aug.,  1909)  ;  Davis 
V.  Zellers,  167  0.  G.  513  (1911).  But  it  would  seem  that 
upon  proper  showing  an  interference  might  be  reopened. 

56.  Amendments  Have  Been  Allowed  Long  After 
Thirty  Day  Limit.  Where  a  party  was  able  to  make  sat- 
isfactory explanation  for  the  delay  in  bringing  the  mo- 
tion, as  was  the  case  in  Becker  v.  Otis,  127  0.  G.  1267, 
amendment  was  permitted  after  the  thirty  day  limit. 
But  where  the  motion  was  made  after  testimony  was 
taken,  alleging  as  the  reason  for  the  delay  the  fact  that 
the  Examiners  in  Chief,  on  appeal  on  priority,  found 
that  the  moving  party  had  no  right  to  make  the  claims, 
which  was  contrary  to  the  ruling  made  by  the  Primary 
Examiner  and  the  Examiner  of  Interferences,  the  motion 

29 


was  properly  refused  as  there  was  no  excuse  for  the 
delay  of  six  months  after  the  decision  of  the  Examiners 
in  Chief.  (Distinguishing  Becker  v.  Otis,  127  0.  G. 
1267 ;  Hanan  d-  Gates  v.  Marshall,  21  Gour.  54-16  (June, 
1909). 

57.  Where  the  Necessity  for  Amendment  Did  Not  Arise 
Until  After  a  Decision  on  Motion  to  Dissolve,  it  was  held 
that  the  motion  to  amend  should  be  transmitted  for  the 
reasons  given  in  Becker  v.  Otis,  127  0.  G.  1267';  Wil- 
liams V.  GiUon,  20  Gour.  82-4  (Nov.,  1908).  New 
counts  will  not  be  admitted  after  partial  dissolution 
where  proofs  as  to  the  same  may  be  presented  in  connec- 
tion with  the  counts  remaining.  Scott  v.  Emniett  &  Hew- 
lett, 119  0.  G.  2233  (1905). 

58.  Adding  Counts  After  Taking  Testimony.  Where 
testimony  has  been  taken,  the  Examiner  should  not  sug- 
gest new  counts  before  judgment  on  priority.  Freeman 
V.  Parks,  117  0.  G.  276  (1905)  ;  Potter  v.  VanCleck  v. 
Thompson,  95  0.  G.  2484,  1901  C.  D.  53 ;  Newell  v.  Huh- 
hard,  15  Gour.  82-3  (Dec,  1903).  After  decision  on 
priority  it  is  too  late  to  amend  by  adding  new  counts. 
Safert  v.  Meyer,  109  0.  G.  1885. 

59.  Amendment  Substituting  Patentable  for  Unpatent- 
able Counts.  It  has  been  held  in  Churcliwarcl  v.  Douglas 
V.  Cutler,  106  0.  G.  2016  (1903),  that  where  some  of  the 
counts  of  the  issue  are  unpatentable  and  one  of  the  par- 
ties proposes  amended  claims  as  substitutes  for  them, 
they  should  be  considered  by  the  Primary  Examiner,  and 
if  found  patentable  he  should  suggest  them  to  the  other 
party  and  fix  a  time  limit  within  which  such  other  party 
may  make  tliem,  and  if  he  fails  to  make  them  within  the 
time,  such  failure  should  have  the  same  effect  as  sug- 
gested claims  under  Eule  96.  Tt  was  also  observed  that 
at  tlie  time  Rule  109  was  adopted  the  practice  of  suggest- 
ing claims  had  not  been  inaugurated  and  that  the  prac- 
tice outlined  in  this  case  is  not  provided  for  in  Rule  109 
(Note:    Rule  109  has  since  been  amended).    If  new  pat- 

30 


entable  counts  are  proposed  after  the  original  counts 
have  been  held  unpatentable,  on  the  evidence  taken,  the 
interference  may  be  redeclared  and  a  motion  under  Rule 
157,  to  use  the  testimony  previously  taken,  would  be  in 
order.  Brooks  v.  Foote  v.  Wenk,  108  0.  G.  287.  The 
foregoing  decisions  are  given  for  the  purpose  of  assisting 
the  practitioner  in  interpreting  Rule  109  as  now  in 
force. 

60.  Adding  New  Counts  by  Stipulation.  New  counts 
may  be  added  to  an  interference  hy  motion  signed  by  all 
the  parties  to  the  interference,  if  the  Law  Examiner 
holds  the  proposed  counts  to  be  patentable,  though  there 
are  no  rules  providing  for  such  practice.  Bcese  v.  Fen- 
wick,  99  0.  G.  669,  1902  C.  D.  145;  Norman  v.  Krimmel- 
Uiii,  115  0.  G.  249. 

61.  Proposed  Counts  Must  Be  Patentable.  The  Law 
Examiner  should  decide  whether  the  proposed  counts  are 
patentable.  If  so,  they  should  be  included  in  the  inter- 
ference, and  if  not,  he  should  make  a  specific  ruling  to 
that  effect,  giving  his  reasons  therefor,  and  the  amend- 
ment should  be  refused  admission,  and  the  party  whose 
motion  is  denied  may  then  appeal  to  the  Examiners  in 
Chief.  Reece  v.  Fenwick,  14  Gour.  3-7  (Feb.,  1902)  ; 
milard  V.  Fisher,  101  0.  G.  2290, 1902  CD.  448 ;  O'Con- 
nor V.  Vanderhilt,  102  0.  G.  1782  (1903). 

62.  Proposed  Counts  Must  Be  Such  That  All  Parties 
Can  Make  Them  and  Patentably  Different  From  Those  Al- 
ready in  the  Interference.  O'Connor  v.  Tandcrbilt,  102 
O.  G.  1782  (1903)  ;  Holli field  v.  Cummings,  154  0.  G. 
1107  (1910)  ;  Moore  v.  Ilewett  v.  Potter,  115  0.  G.  509; 
Hicks  V.  Costcllo,  103  0.  G.  1163  (1903)  ;  Toivnsend  v. 
Copeland  v.  Bobinson,  124  0.  G.  623  (1906). 

63.  Questions  Considered  on  Motions  to  Amend.  A 
motion  to  amend  raises  the  question  of  the  patentability 
of  the  proposed  counts ;  the  right  of  the  parties  to  make 
them  and  all  grounds  raised  in  opposition  to  the  motion, 
but  the  same  questions  will  not  be  again  considered  on  a 

31 


motion  to  dissolve.  Rule  109.  Dimlap  v.  Creveling  v. 
Rector,  21  Gour.  67-8  (Sept.,  1909)  ;  Lotterhand  v.  Corn- 
umll,  154  0.  G.  515  (1910). 

64.  After  a  Motion  Has  Been  Transmitted,  additional 
claims  not  set  out  in  the  original  motion,  will  not  neces- 
saril^'  be  considered  bj^  the  Examiner.  Mattice  v.  Lang- 
worihij,  132  0.  G.  678  (1907). 

DISSOLUTION. 

65.  Dissolution  of  Interference— Rule  122.  Rule  122 
sets  forth  three  separate  and  distinct  grounds  for  dis- 
solving interferences. 

1.  That  there  has  been  such  informality  in  declaring 
the  same  as  will  preclude  a  proper  determination  of  the 
question  of  priority  of  invention. 

2.  On  the  ground  that  the  claims  of  the  issue  are  not 
patentable. 

3.  That  a  party  has  no  right  to  make  the  claim. 

It  has  been  held  that  the  three  grounds  for  dissolution 
mentioned  in  Rule  122,  relate  respectively  to  very  differ- 
ent matters  and  should  not  be  confused,  one  with  the 
other.  Kaczander  v.  Hodges  tO  Hodges,  118  0.  G.  836 ; 
Woodward  v.  Newton,  86  0.  G.  490 ;  Owen  v.  Richard- 
son, 111  0.  G.  1037  (1904). 

66.  Motion  to  Dissolve — In  General.  It  should  be 
borne  in  mind  in  considering  the  older  decisions  relating 
to  motions  to  dissolve,  that  the  rules  were  amended  May 
7,  1914,  transferring  from  the  Primary  Examiner  to  the 
Law  Examiner  jurisdiction  of  motions  to  dissolve.  202 
0.  G.  634. 

Motions  1o  dissolve  must  set  i'orth  definitely  the 
grounds,  upon  wliicli  motion  is  l);ise(l  and  a  failure  to  be 
specific  and  accurate  often  results  in  denial  of  the  mo- 
tion. If  the  ground  is,  that  the  issue  is  not  patentable, 
llicn  the  motion  must  ch-arly  set  forth  why  it  is  not  pat- 
entahh'.  It  iinist  state  how  the  ])atents  cited  anticipate 
the   issne,  that   is,  whether  each  patent  anticipates  the 

32 


issue,  or  if  not,  how  they  are  to  be  combined  to  show 
anticipation  of  the  issue.  If  there  is  more  than  one  count 
in  the  issue,  it  must  be  shown  to  what  count  the  antici- 
pating patents  apply  and  how  they  apply.  Rountree  v. 
Sloan,  189  0.  G.  1281  (1913)  ;  Keyes  &  Kraus  v.  Yunck, 
182  0.  G.  248  (1912;  yandcrveld  v.  Smith,  159  0.  G.  490 
(1910)  ;  Heij7ie,  etc.  v.  DeVilhm,  125  0.  G.  669  (1906) ; 
Burleigh  v.  Elliott,  197  0.  G.  240  (1913). 

A  party  may  base  his  motion  upon  all  the  grounds 
mentioned  in  Rule  122  and  the  Primary  Examiner  (Law 
Examiner)  is  required  to  decide  the  motion  upon  all  the 
grounds  and  fix  a  limit  of  appeal  as  to  those  grounds 
upon  which  an  appeal  may  be  taken.  Hopfelt  v.  Read, 
106  0.  G.  767  (1903)  ;  Oldham  cC;  Padhury  v.  Feck  et  al., 
99  0.  G.  670,  1902  C.  D.  148 ;  Read  v.  Scott,  14  Gour. 
3-5  (Jan.,  1902)  ;  Hinkley  v.  Baker,  97  0.  G.  2742,  1901 
C.  D.  236;   Owen  v.  Richardson,  Jr.,  Ill  0.  G.  1037. 

The  several  grounds  mentioned  in  Rule  122  have  sep- 
arate, distinct  and  well  defined  meanings,  and  the  mo- 
tion should  not  state  the  facts  in  such  way  that  the  Ex- 
aminer will  not  be  able  to  determine  what  facts  are  re- 
lied upon  to  support  each  separate  ground  for  dissolving 
the  interference.  The  Examiner  is  recpiired  to  decide 
the  motion  upon  each  ground  alleged  and  therefore  it  is 
important  that  the  motion  should  state  what  facts  furnish 
the  reason  for  dissolving  the  interference  upon  ground 
1 ;  what  facts  furnish  the  reason  for  dissolving  the  inter- 
ference upon  ground  2,  and  what  facts  furnish  the  rea- 
son for  dissolving  the  interference  upon  ground  3. 
Woodward  v.  Newton,  86  0.  G.  490;  Vreeland  v.  Fessen- 
den,  etc.,  117  0.  G.  2633  (1905)  and  same  case,  119  0.  G. 
1259  (1905)  ;  Dunker  v.  Reist,  119  0.  G.  1925  (1905)  ; 
Thiilen  v.  Young  &  Townsend,  118  0.  G.  2251  (1905)  ; 
Kl&petke  v.  Becker,  120  0.  G.  658  (1905)  ;  Owens  v. 
Richardson,  111  O.  G.  1037  (1903). 

We  have  seen  by  the  foregoing  decisions  that  the  mo- 
tion must  be  definite  and  certain  as  to  how  the  facts  apply 
c  33 


to  each  ground  stated  in  the  motion,  but  the  question 
often  arises  as  to  what  is  and  what  is  not  definite.  Where 
there  was  more  than  one  count  in  the  interference  and 
the  moving  party  failed  to  specify  whether  his  motion 
was  directed  to  all  or  onlj-  a  part  of  the  counts  in  issue, 
and  there  was  no  specific  statement  as  to  which  element 
of  the  claims  are  not  supported  by  the  original  disclo- 
sure, it  was  held  that  the  motion  should  not  be  trans- 
mitted. Lizotte  V.  Neuherfh,  124  0.  G.  1842  (1906). 
Where  the  motion  was  on  the  ground  of  unpatentability 
in  ^iew  of  eight  references,  of  which  it  is  stated  "each 
of  the  counts  is  met  by  each  of  the  patents  singly  or  in 
combination,  "it  was  held  that  the  allegations  were  in 
the  alternative  and  indefinite.  Thullen  v.  Townsend,  130 
0.  G.  1312  (1907).  Where  the  allegation  was  that  the 
issue  is  not  patentable  in  view  of  certain  references,  but 
it  was  not  stated  how  these  references  are  to  be  applied, 
transmission  of  the  motion  was  refused.  Phillips  v. 
Scott,  130  0.  G.  1312  (1907).  Where  it  was  alleged  that 
each  of  the  counts  of  the  issue  is  anticipated,  or  neces- 
sarily limited,  it  was  held  that  the  allegations  are  in  the 
alternative  and  the  motion  therefore  does  not  state  which 
counts  are  to  be  urged  as  anticipated  and  which  limited, 
nor  does  it  show  which  patents  are  to  be  relied  upon  for 
anticipation  and  which  for  restriction.  Murphy  v.  Bor- 
land, 132  0.  G.  231.  All  the  references  must  be  put  into 
the  motion  when  filed.  A  moving  party  will  not  be  per- 
mitted to  cite  certain  references  in  his  motion  and  then 
state  that  he  will  cite  others  more  than  five  days  before 
the  hearing.  The  motion  would  be  good  as  to  the  pat- 
ents cited,  but  not  as  to  any  that  might  be  thereafter 
cited.  Papcndrll  v.  Bunnell,  etc.,  131  0.  G.  362  (1907). 
67.  References  Discovered  After  the  Motion  Has  Been 
Piled  or  Transmitted.  If  a  party  can  make  a  proper  show- 
ing tliat  he  has  discovered  since  the  filing  of  his  motion, 
or  since  its  transmission,  a  new  and  pertinent  reference, 
and  a  further  satisfactory^  showing  that  it  could  not  have 

34 


been  earlier  discovered,  he  may,  by  giving  due  notice  to 
his  opponent,  have  such  reference  considered  as  a  part 
of  his  motion.  Kurts  v.  Jackson  (&  Pierce,  98  0.  G.  2568, 
1902  C.  D.  106;  Young  v.  Eick,  113  0.  G.  547.  But 
where  no  such  showing  is  made  a  party  will  not  be  per- 
mitted to  argue  the  pertinency  of  references  not  set  out 
in  his  motion.  Ililliard  &  Persons  v.  Hewlett,  19  Gour. 
55-10  (April,  1907). 

68.  Only  One  Motion  to  Dissolve.  A  motion  to  dissolve 
may  not  be  presented  in  piece  meal  by  presenting  a  mo- 
tion on  one  ground  and  if  it  is  denied,  present  another 
motion  upon  a  different  ground.  The  whole  case  must 
be  presented  in  one  motion.  Richards  v.  Kletzker  & 
Goesel,  98  0.  G.  1709,  1902  C.  D.  62 ;  Finch  v.  Singleton, 
98  0.  G.  1709, 1902  C.  D.  61 ;  Egly  v.  Schultze,  117  0.  G. 
276  (1905). 

69.  Motion  to  Extend  Time  for  Filing  Motion  to  Dis- 
solve. The  granting  or  refusing  of  a  motion  to  extend 
time  for  filing  motion  to  dissolve  is  within  the  discretion 
of  the  official  before  whom  the  motion  is  filed.  Egly  v. 
Schultze,  117  0.  G.  276  (1905). 

70.  Amendment  of  Motion.  Amendment  of  a  motion 
may  be  permitted  and  time  given  therefor,  if  it  appears 
that  a  party  is  acting  in  good  faith.  Jones  v.  Hulse  v. 
Melville,  21  Gour.  86-15  (July,  1909). 

Questions  involving  priority  are  not  presented  by  mo- 
tions to  dissolve  and  the  Examiner  should  not  pass  upon 
such  questions.  Clement  v.  Broum  v.  Stroud,  126  0.  G. 
2189  (1907)  ;   Wcnde  v.  Horine,  118  0.  G.  1070  (1905). 

71.  Operativeness.  On  motion  to  dissolve  on  the 
ground  of  inoperativeness,  it  was  held  that  the  interfer- 
ence would  be  dissolved  whether  the  structure  of  one  or 
both  of  the  parties  is  inoperative,  but  where  a  party 
files  a  motion  before  the  Examiner  of  Interferences  for 
permission  to  take  testimony  on  the  ground  that  his  op- 
ponent's structure  is  inoperative,  it  is  necessary  for  the 
moving  party  to  show  that  the  alleged  ground  of  inopera- 

35 


tiveness  does  not  apply  to  his  own  structure.  This  is 
because  if  the  structures  of  both  parties  are  inoperative, 
there  is  no  question  of  priority  presented.  Clement  v. 
Browne  v.  Stroud,  126  0.  G.  2*189  (1907)  ;  Bodivitch  v. 
Todd,  98  0.  G.  792. 

72.  Informality  in  Declaring  the  Interference.  "Where 
there  were  132  counts  in  the  interference,  it  was  held  that 
the  great  number  of  counts  would  of  itself  tend  to  pre- 
clude a  proper  determination  of  priority,  and  under  the 
provisions  of  Rule  212,  the  interference  should  be  trans- 
mitted to  the  Primary  Examiner  to  determine  whether 
the  interference  should  not  be  dissolved  and  a  reasonable 
number  of  counts  substitued  for  those  forming  the  issue. 
Bagena  v.  Harris,  150  0.  G.  266  (1909). 

73.  Defects  in  Oath.  Where  the  oath  filed  with  one 
of  the  applications  was  administered  by  the  attorney  for 
the  applicant,  the  interference  was  dissolved.  Reigger 
V.  Bcirel,  150  0.  G.  826  (1909) .  Where  it  was  discovered 
during  the  taking  of  testimony  that  there  was  an  inform- 
ality in  the  oath  of  one  of  the  parties  and  such  party 
promptly  filed  a  corrected  oath,  the  motion  was  denied. 
Jackson  V.  Wcler,  18  Gour.  84-13  (Nov.,  1906). 

74.  Lack  of  Official  Seal  of  officer  who  administered 
the  oath  may  be  cured  by  proof  that  the  officer  actually 
had  authority  to  administer  it.  Dukesmith  v.  Covington 
V.  Turner,  126  0.  G.  348.  The  lack  of  such  seal  is  an  ex 
parte  matter  and  not  an  irregularity  warranting  disso- 
lution.   Aucrlach  &  GuMng  v.  Wiswell,  108  0.  G.  289. 

75.  Supplemental  Oath.  Where  a  party  has  filed  no 
preliminary  statement,  a  motion  to  dissolve  upon  the 
ground  that  the  claim  should  have  been  supported  by  a 
supplemental  oath,  should  be  transmitted  for  determina- 
tion of  wlicther  a  supplemental  oath  is  necessary,  and, 
if  found  necessary  and  is  not  furnished  within  a  reason- 
able time,  tlie  interference  slioukl  be  dissolved.  Gold  v. 
Dixon,  194  0.  G.  1142,  1913  C.  D.  217. 

76.  That  the  Issues  Are  Vague   and  Indefinite,   are 

36 


proper  questions  to  raise  as  constituting  informality  in 
declaring  an  interference.  Field  v.  Colnian,  131  0.  G. 
1686  (1907);  Anderson  v.  Vrooman,  123  0.  G.  2975 
(1906)  ;  Dinkel  v.  D' Oliver,  113  0.  G.  2507  (1903).  An 
interference  is  irregularly  declared  where  one  of  the 
applications  does  not  disclose  the  subject  matter  of  one 
of  the  counts.  Gilhert-Stringcr  v.  Johnson,  102  0,  G. 
621 ;  1903  C.  D.  20. 

77.  Abandonment.  Where  an  abandoned  application 
is  put  in  interference  with  another  application,  it  may 
be  dissolved  as  irregularly  declared.  Coulson  v.  Callen- 
der  &  Callendcr,  101  0.  G.  1607. 

78.  "What  Is  Not  Such  Irregularity  or  Informality  in 
Declaring-  the  Interference  as  Will  Preclude  the  Proper  De- 
termination of  the  Question  of  Priority  of  Invention.  Mul- 
tiplicity of  counts  is  not  an  irregularity,  if  the  counts  are 
separately  patentable.  Narman  v.  Krimelbein,  118  0.  G. 
2251  (1905).  That  the  Examiner  has  not  notified  the 
parties  that  the  claims  in  issue  are  patentable.  Luger 
V.  Broivning,  100  0.  G.  231 ;  1902  C.  D.  230.  That  a 
party  has  stated  in  his  applications  involved  in  the  in- 
terferences that  they  are  divisions  of  a  prior  patent 
granted  to  him ;  Meyer  v.  Sarfert,  96  0.  G.  1037 ;  1901 
C.  D.  91.  That  a  party  has  rejected  claims  and  if  they 
should  be  decided  "to  be  patentable,  a  new  interference 
would  be  necessary.  Truax  v.  Rohinson,  13  Gour.  82-2 
(Dec.,  1901).  Where  no  irregularity  was  pointed  out, 
and  the  issue  was  construed  as  broad  enough  to  cover 
the  inventions  of  both  parties.  Gillespie  v.  Dean,  15 
Gour.  83-7  (Nov.,  1903).  That  the  claims  of  the  counts 
cover  two  species  of  invention.  Atlierton  tO  Happ  v. 
Cheney,  111  0.  G.  10-10.  That  the  suggestion  of  claims 
was  not  authorized  by  the  practice  then  in  force.  Myers 
V.  Broivn,  112  0.  G.  2093.  The  sending  of  a  notice  of 
interference  to  a  patentee  referring  to  his  patent  as  an 
application.  GaeUj  v.  Brand,  16  Gour.  50-4.  That  the 
suggestion  of  the  claim  in  interference  to  the  party  by 

37 


the  Examiner,  was  improper,  because  said  party  had  not 
claimed  substantiallr  the  same  invention  expressed  in 
said  claim.  Medcn  v.  Curtis,  117  0.  G.  1795  (1905). 
That  the  Examiner  improperly  suggested  claims  under 
Rule  96.  Templin  v.  Sergeant,  119  0.  G.  961  (1905). 
That  the  Examiner  improperly  issued  a  patent  to  the  op- 
ponent of  the  mo^*ing  party  during  the  pendency  of  his 
application  (That  is  a  matter  the  office  can  not  remedy). 
Dunher  v.  Beist,  119  0.  G.  1925  (1905).  That  the  Ex- 
aminer failed  to  include  certain  claims  made  by  both 
parties,  where  the  claims  not  included  are  not  patentably 
different  from  those  which  were  included.  Galhj  v.  Bur- 
ion,  120  0.  G.  325  (1905)  ;  Earll  v.  Love,  140  0.  G.  1209 
(1909).  Mere  clerical  errors  which  may  be  corrected  by 
a  letter  of  the  Primary  Examiner  calling  attention  to 
them,  does  not  warrant  dissolution.  Gaily  v.  Burton, 
120  0.  G.  325  (1905).  The  fact  that  the  issue  invoh-ing 
a  parent  ease  could  as  well  have  been  included  in  the 
interference  iuYolving  a  divisional  application.  Phillips 
V.  Sensenick,  122  0.  G.  1047  (1906).  That  the  counts  of 
the  interference  are  not  patentably  different.  Hawkins 
V.  Young,  21  Gour.  34-3  (May,  190*9)  ;  McEeen  v.  Davis, 
21  Gour.  84-7  (Aug.,  1909).  The  fact  that  the  Exam- 
iner formulated  the  claim  suggested  for  the  purpose  of 
interference,  is  not  an  informality  in  declaring  the  inter- 
ference.   Gold  V.  Dixon,  194  0.  G.  1142  (1913). 

Irregularities  in  the  prosecution  of  an  application 
should  not  be  confused  with  irregularities  in  declaring 
the  interference.  Colburn  cC  Washburn  v.  Hitchcock, 
145  0.  G.  1022  (1909). 

A  party  who  requests  a  declaration  is  not  in  a  position 
to  urge  irregularity  in  declaring  it.  Wickers  &  Furlong 
V.  Weinnurm,  117  0.  G.  1797  (1905). 

AVhcre  a  party  malvcs  suggested  claims  under  protest, 
it  was  held  that  while  such  facts  might  warrant  a  motion 
by  such  party  to  dissolve  on  the  ground  that  he  had  no 
right  to  make  the  claims,  the  same  facts,  however,  would 

38 


not  sustain  a  motion  to  dissolve  on  the  ground  of  in- 
formality and  irregularity  in  declaring  the  interference. 
Eichelberger  &  Hihner  v.  Dillon,  129  0.  G.  3161  (1907). 
Where  the  Examiner  includes  in  an  interference 
counts  Avhich  he  has  held  not  patentable,  such  inclusion  is 
not  an  irregularity  in  declaring  the  interference,  because 
the  party  had  a  right  to  appeal  on  the  question  of  the 
patentability  of  those  counts  and  they  are  properly  re- 
tained in  the  interference,  but  if  he  fails  to  appeal  within 
the  time  set  therefor,  the  interference  stands  dissolved  as 
to  those  counts.  In  such  case  it  is  customary  for  the 
Examiner  of  Interferences,  when  the  case  is  returned  to 
him  from  the  Law  Examiner,  to  notify  the  parties  that 
the  interference  is  dissolved  as  to  such  counts.  Halwood 
V.  McCormick,  16  Gour.  84-7. 

79,  Motion  to  Dissolve  on  the  Ground  That  the  Issue  Is 
Not  Patentable — Who  May  Question  Patentability  of  the 
Issue.  A  party  whose  claims  are  held  not  patentable  can 
not  question  the  patentability  of  the  claim  of  his  op- 
ponent. Soverign  &  Lenders  v.  Lillie,  185  0.  G.  830 
(1912). 

80.  Who  Has  Jurisdiction  to  Determine  Patentability. 
A  motion  for  dissolution  was  based  on  all  grounds  pro- 
vided by  the  rules.  The  motion  was  denied  by  the  Pri- 
mary Examiner.  A  petition  to  the  Commissioner  was 
filed,  asking  that  the  Examiner  of  Interferences  be  di- 
rected to  pass  on  the  patentability  of  certain  counts. 
The  Commissioner  held  that  the  Examiner  of  Interfer- 
ences had  no  jurisdiction  to  pass  upon  the  questions 
which  were  sought  to  be  placed  before  him,  because  they 
do  not  relate  to  the  question  of  priority.  Wood  v.  Pfis- 
ier,  154  0.  G.  837  (1910). 

The  question  of  the  patentability  of  the  issue  should  be 
raised  by  a  motion  to  dissolve  and  will  be  determined  by 
the  Law  Examiner  (formerly  by  the  Primary  Exam- 
iner). The  Court  of  Appeals,  D.  C,  has  held  that  the 
question  of  the  patentability  of  the  issue  is  not  a  juris- 

39 


dictional  one  which  must  be  considered  by  each  of  the 
tribunals  called  upon  to  pass  on  the  question  of  priority 
of  invention  in  an  interference  proceeding.  Johnson  v. 
Mueser,  29  App.  D.  C.  61,  145  0.  G.  764.  It  is  well 
settled  that  the  patentability  of  the  issue  will  be  consid- 
ered on  final  hearing  only  under  the  supervisory  author- 
ity of  the  Commissioner  and  in  a  clear  case.  Dixon  v. 
Marsh,  et  at.,  127  0.  G.  1993 ;  Soley  v.  Ilolschlaw,  126 
0.  G.  3041,  28  App.  D.  C.  65 ;  Potter  v.  Mclntosch,  127 
0.  G.  1995,  28  App.  D.  C.  510 ;  Iliiher  v.  Aiken,  88  0.  G. 
1525.  Where  an  applicant  sought  to  present  the  ques- 
tion of  patentability  on  an  appeal  to  the  Commissioner 
from  a  judgment  of  priority,  it  was  held  that  the  inter- 
ference should  not  be  dissolved,  though  had  the  question 
been  presented  at  the  proper  time  by  a  motion  to  dis- 
solve it  would  have  been  dissolved.  De  F arrant i  v.  Lind- 
mar/c,  183  0.  G.  782  (1912). 

81.  Nature  of  Right  to  Question  Patentability.  A  mo- 
tion to  dissolve  on  the  ground  of  non-patentability  is  not  a 
matter  of  right  under  any  statute,  but  is  a  matter  of  pro- 
cedure arising  under  the  rules  of  practice,  and  the  mov- 
ing party  appears  in  such  motion  merely  as  amicus  curea. 
Whether  a  certain  count  is  patentable  is  a  question  be- 
twe'en  the  applicant  presenting  it  and  the  office,  as  is 
every  claim  presented  in  an  application  where  there  is 
no  opposing  party.  But  following  certain  decisions  indi- 
cating that  it  is  of  assistance  to  the  office  to  have  the  op- 
posing party  argue  the  patentability  of  the  issue,  the 
rules  were  amended  to  provide  for  appeals  on  this  ques- 
tion, inter  partes.  See  Appeal,  Kelly  v.  Dempster,  164 
O.  G.  975  (1911);  Gold  v.  Gold,  150  0.  G.  570-  573; 
Griffith  V.  Dodgson,  116  O.  G.  1731  (1905)  ;  Lipe  v.  Mil- 
ler, 109  0.  G.  1608;  liohUns  v.  Titus,  111  0.  G.  584; 
Patterson  v.  Hrhrr,  192  0.  G.  215  (1913). 

82.  Effect  on  Moving  Party.  Where  an  applicant 
moves  to  dissolve  on  the  ground  that  the  issue  is  not  pat- 
ental)lc,  his  opponent  being  a  patentee,  such  applicant  is 

40 


thereafter  estopped  from  insisting  upon  the  claims. 
Weissenthanner  v.  Goldstein,  111  0.  G.  810  (1904).  A 
patentee  may  not  urge  non-patentability  of  his  claims. 
Fend  v.  Miggett,  223  0.  G.  649  (1915). 

83.  When  Motion  Should  Be  Made.  The  motion  to 
dissolve  upon  this  ground  should  of  course  be  made  at 
the  time  and  as  provided  by  the  rules,  but  such  motions 
have  been  made  at  various  stages  of  the  proceedings. 
Where  the  motion  was  made  after  the  taking  of  testi- 
mony, it  was  held  that  the  interference  would  not  be  sus- 
pended to  consider  the  pertinency  of  a  reference.  To 
warrant  such  consideration  the  anticipation  must  be 
clearly  apparent.  Graham  v.  LangJiaar,  111  0.  G.  240 
(1912) .  Where  a  party  is  an  applicant  and  his  opponent 
is  a  patentee  and  the  applicant  in  response  to  a  motion 
to  show  cause  why  judgment  should  not  be  rendered 
against  him  for  failure  to  take  testimony,  no  testimony 
having  been  taken,  moves  to  dissolve  on  the  ground 
that  the  issue  is  not  patentable,  the  interference  should 
not  be  dissolved,  but  judgment  should  be  rendered. 
Smith  V.  Slocum,  123  0.  G.  1990;  1906  C.  D.  269. 

84.  Character  of  Showing  Required.  Where  the  mo- 
tion to  dissolve  alleges  that  the  counts  are  not  patentable 
in  view  of  certain  enumerated  patents,  if  the  moving 
party  is  of  the  opinion  that  each  of  the  references  is  an 
anticipation  of  each  of  the  claims,  the  motion  should  so 
state.  If  not,  the  motion  should  enumerate  the  refer- 
ences in  connection  with  the  claims  to  which  they  will 
be  applied  in  the  argument.  If  the  contention  of  non- 
patentability  is  based  upon  the  theory  of  aggregation,  or 
double  use,  or  substitution  of  equivalents,  it  should  ap- 
pear in  the  motion,  also  the  manner  in  which  it  is  pro- 
posed to  combine  the  references.  Heyne,  Hay  ward  &  Mc- 
Carthy V.  DcYilbiss,  125  0.  G.  669  (1906).  Ex  parte  af- 
fidavits will  not  support  the  motion,  for  the  reason,  that 
if  the  interference  is  dissolved,  the  claims  must  be  re- 
jected and  the  claims  can  not  be  rejected  on  ex  parte 

41 


/ 


affidavits.  Ellis  v.  Boyce  v.  Burcherial,  195  0.  G.  273 
(1913)  ;  Barratt  v.  Swingelhurst,  144  0.  G.  818  (1909)  ; 
Ex  parte  Van  Ausdel,  91  0.  G.  1617 ;  McKenzie  v.  Gil- 
lespie, et  al.,  93  0.  G.  2103. 

Anticipating-  patents  must  be  such  as  are  not  antedated 
by  the  preliminary  statement.  Forsyth  v.  Richards,  115 
0.  G.  1327  (1905),  but  in  Martin  v.  Goodrum,  etc.,  130 
0.  G.  1485  (1907),  it  was  held  that  a  motion  setting  up 
such  a  patent  as  an  anticipation  should  be  transmitted 
for  the  purpose  of  permitting  the  (Examiner)  Law  Ex- 
aminer to  consider  the  pertinency  of  the  reference  and 
permit  the  filing  of  an  affidavit  alleging  facts  required  by 
Rule  75,  outside  those  contained  in  the  preliminary  state- 
ment. 

Patents  granted  on  applications  filed  subsequent  to  the 
date  of  invention  alleged  in  the  preliminary  statement 
of  one  of  the  parties,  are  not  anticipating  patents  which 
will  support  a  motion  to  dissolve  an  interference  upon 
the  ground  of  non-patentability.  Raymond  v.  Kitsel- 
man,  et  al,  134  0.  G.  2243  (1908).   • 

85.  Appeal — When  Not  Permitted  (See  Appeal).  No 
appeal  is  permitted  from  a  decision  of  the  Law  Examiner 
affirming  patentability  of  the  issue.  All  interlocutory 
matters,  such  as  motions  to  dissolve,  are  regulated  by  the 
Patent  Office  rules  and  a  party  has  no  statutory  right  to 
appeal  on  any  question  except  a  judgment  on  priority 
rendered  in  an  interference,  hence  if  he  has  a  right  to 
appeal  he  must  find  that  right  in  the  Patent  Office  rules. 
The  Primary  Examiner  is  given  authority  to  pass  on 
questions  of  patentability  of  the  issue  and  neither  the 
statute  nor  the  rules  of  the  Patent  Office  permit  appeals 
from  a  decision  rendered  upon  a  motion  for  dissolution 
affirming  patentability  of  the  issue  (Allen  v.  Lowry,  116 
O.  G.  2253)  and  it  is  only  from  decisions  adverse  to  the 
patentability  of  the  claims  that  an  appeal  will  lie  (Sohey 
V.  Ilolschlaw,  126  0.  G.  3041,  28  App.  D.  C.  65).  As  the 
Priinary    Examiners   are   under   the    Commissioner,   he 

42 


may,  where  it  is  clear  that  gross  error  has  been  commit- 
ted in  holding  the  issue  patentable,  exercise  his  super- 
visory authority  and  take  jurisdiction  of  the  question, 
but  such  will  not  be  exercised  where  there  is  merely  a 
difference  of  opinion  on  the  part  of  the  lower  tribunals. 

86.  How  the  Question  of  Patentability  of  the  Issue 
May  Come  Before  the  Commissioner.  The  Examiner  of 
Interferences,  in  his  decision,  and  likewise  the  Exam- 
iners in  Chief  on  appeal,  are  confined  to  the  question  of 
prioritj',  but  if  any  other  matter  not  relating  to  priority 
and  which  would  amount  to  a  statutory  bar  to  the  grant- 
ing of  a  patent  to  either  of  the  parties,  shall  come  to  their 
notice,  they  may  direct  the  attention  of  the  Commis- 
sioner to  such  matter  under  Rule  126,  and  the  Commis- 
sioner may,  before  judgment  on  the  question  of  priority, 
suspend  the  interference  and  remand  the  case  to  the 
Primary  Examiner,  for  his  consideration  of  the  matters 
to  which  his  attention  has  been  directed,  and  from  the 
decision  of  the  Examiner  an  appeal  may  be  taken.  If 
the  Commissioner  does  not  remand  the  case,  the  Primary 
Examiner  will,  after  judgment,  consider  any  matter  af- 
fecting the  rights  of  either  party  to  a  patent  which  may 
have  been  called  to  his  attention,  unless  the  same  shall 
have  been  previously  disposed  of  b}^  the  Commissioner. 
After  the  Primary  Examiner  has  held  the  claims  to  be 
patentable  and  the  Examiner  of  Interferences  and  the 
Examiners  in  Chief  have  omitted  or  declined  to  call  the 
attention  of  the  Commissioner  to  the  non-patentability  of 
the  issue,  or  where  the  Commissioner  has  declined  to  re- 
view the  decision  of  the  Primary  Examiner,  after  his  at- 
tention has  been  called  to  the  alleged  non-patentability 
of  the  issue,  the  Court  of  Appeals  will  consider  the  pat- 
entability' of  the  issue  settled,  except  in  an  extraordinary 
case.  Soheij  v.  Ilolschlaw,  126  0.  G.  3041,  28  App.  D.  C. 
65;  Allen  v.  Lowry,  116  0.  G.  2253  (1905). 

87.  No  Right  to  Make  the  Claims.  Since  the  decision 
of  the  Court  of  Appeals,  D.  C,  in  Podelsack  v.  Mclnner- 

43 


ney,  26  App.  D.  C.  399,  the  question  of  the  right  of  a 
party  to  make  the  claims  of  the  issue,  has  been  uniformly 
held  to  be  an  ancillary  question  to  be  considered  in  de- 
termining the  question  of  priority  of  invention  and  this 
question  may  be  raised  on  final  hearing  and  on  appeal. 
As  a  result  of  this  decision  Rule  130  was  promulgated, 
by  the  provisions  of  which,  where  the  patentability  of  a 
claim  to  an  opponent  is  material  to  the  right  of  th^  party 
to  a  patent,  said  party  may  urge  the  non-patentability 
of  the  claim  to  his  opponent  at  final  hearing  and  on  ap- 
peal, but  he  can  not  raise  the  question  unless  he  shall 
have  duly  presented  a  motion  under  Rule  122  for  disso- 
lution upon  that  ground,  or  show  good  reason  why  such 
motion  was  not  presented.  It  was  therefore  held  in 
McBerty  v.  Shore  &  Shore,  175  0.  G.  843  (1911),  that 
the  Examiners  in  Chief  properly  awarded  priority  upon 
the  ground  that  one  of  the  parties  had  no  right  to  make 
the  claims.  Following  further  the  development  of  the 
practice  we  find  in  Cosper  v.  Gold  ct  Gold,  151  0.  G.  194, 
34  App.  D.  C.  194,  the  Court  of  Appeals  dismissed  the 
appeal  upon  the  ground  that  it  was  taken  from  a  deci- 
sion of  the  Commissioner  dissolving  the  interference  be- 
cause Cosper  had  no  right  to  make  the  claims  of  the  issue, 
and  under  such  circumstances  it  was  not  a  final  decision 
which  could  be  appealed  to  that  court.  Thereupon  the 
Commissioner  entered  an  award  of  priority  based  upon 
Cosper 's  lack  of  right  to  make  the  claims  and  from  this 
decision  Cosper  appealed  to  the  Court  of  Appeals,  and  it 
was  held  that  under  the  practice  established  by  the  de- 
cision of  Podclsack  v.  Mclnncrncy,  two  questions  arise 
in  every  interference  case  where  the  right  of  one  of  the 
parties  to  make  the  claims  of  tlie  issue  are  presented  on  a 
motion  to  dissolve  upon  that  ground,  to  wit:  the  right  to 
make  the  claims,  and  the  priority  of  invention.  If  the 
first  sluill  he  decided  adversely  to  the  claimant,  the 
foniiwl  award  of  priority  goes  to  his  opponent  as  a  mat- 
ter of  course.    But  in  Carlin  v.  Goldberg,  45  App.  D.  C. 

44 


540,  23G  0.  G.  1222;  1917  C.  D.  12S,  it  was  held  that  no 
award  of  priority  could  be  made  on  a  motion  to  dissolve 
upon  this  ground,  before  proofs  are  taken,  and  it  was 
pointed  out  that  in  Cosper  v.  Gold  the  judgment  was 
entered  after  the  interference  had  been  tried  and  the 
question  of  priority  hinged  upon  the  question  as  to 
whether  Cosper  had  a  right  to  make  the  claims.  Where 
there  has  been  no  hearing  upon  the  question  of  priority, 
no  award  of  priority  can  be  made  on  motion  to  dissolve. 

On  motion  to  dissolve  on  the  ground  that  a  party  has 
no  right  to  make  the  claims,  the  sole  question  to  be  con- 
sidered is  whether  the  specification  and  drawings  of  the 
application  are  sufficient  to  justify  the  allowance  of  the 
claims  in  question.  Seacomhe  v.  Burke,  182  0.  G.  973 
(1912). 

A  dissolution  on  the  ground  that  a  party  has  no  right 
to  make  the  claims,  is  merely  a  ruling  that  it  was  a  mis- 
take to  declare  the  interference  as  to  that  party.  Camp- 
hell  V.  Dyson  v.  Dunham,  242  0.  G.  253  (1916). 

Abandonment  of  the  invention  goes  to  the  question  of 
the  right  to  make  the  claims.  Felsing  v.  Nelson,  121  0. 
G.  1347  (1906). 

Where  the  issue  was  alleged  to  be  substantially  the 
same  as  that  of  a  prior  interference  between  the  same 
parties,  and  the  senior  party  had  been  defeated  on  the 
question  of  priorit}^,  it  was  held  that  the  question  pre- 
sented was  one  involving  the  right  of  the  senior  party  to 
make  the  claims.  Eschinger  v.  Drummond,  etc.,  121  0. 
G.  1348  (1906). 

Where  the  moving  party  alleges  that  he  has  no  right 
to  make  the  claims,  tlie  motion  will  be  refused  transmis- 
sion, because  if  he  is  of  the  opinion  that  he  has  no  right 
to  make  the  claims,  he  should  take  action  in  accordance 
with  the  provisions  of  Rule  125,  or  he  may  take  no  ac- 
tion whatever  in  the  interference  and  permit  judgment 
to  go  by  default.  MiUer  v.  Perham,  121  0.  G.  2667 
(1906);    Kinneij  v.  GoodMe,  123  0.  G.  1663   (1906); 

45 


Goodwin  v.  Smith,  123  0.  G.  998  (1906).  But  Commis- 
sioner Billings  allowed  the  filing  of  motions  under  such 
circumstances.  And  where  the  claims  were  suggested 
under  Rule  96,  a  different  rule  prevails,  and  a  party  may 
properly  move  to  dissolve  on  the  ground  that  he  has  no 
right  to  make  the  claims,  but  in  such  case  he  must  state 
specifically  the  reasons  upon  which  his  motion  is  based. 
Hermsdorf  v.  Driggs  v.  Schneider,  133  0.  G.  1189 
(1908). 

The  facts  which  will  support  a  motion  to  dissolve  on 
the  ground  that  a  party  has  no  right  to  make  the  claims, 
relate  to  the  extent  of  disclosure,  estoppel,  operativeness, 
and  the  like,  and  if  established  will  result  in  rejection  of 
the  claims  to  which  they  are  applicable.  Booth,  et  al.,  v. 
Hanan,  et  al.,  123  0.  G.  319  (1906). 

Alleging  on  motion  to  dissolve,  facts  which  relate  to 
priorit.Y  does  not  present  anj^  question  for  consideration 
on  such  motion,  and  it  will  be  refused  transmission. 
Dickinson  v.  Hildreth,  122  0.  G.  1397  (1906). 

Recommendation  by  Examiners  in  Chief.  If  the  Exam- 
iners in  Chief  in  affirming  a  decision  of  the  Law  Exam- 
iner holding  that  a  party  has  no  right  to  make  the 
claims,  recommends  that  the  other  party  also  has  no  right 
to  make  the  claims,  such  other  party  may  appeal  ex  parte 
from  such  recommendation.  Woodhridge  v.  Conrad,  165 
0.  G.  241  (1911). 

A  party  cannot  be  deprived  of  his  right  to  make  claims 
because  his  structure  performs  some  function  in  addi- 
tion to  what  is  called  for  by  the  claims.  Miel  v.  Young, 
]26  0.  G.  2591  (1906),  29  App.  D.  C.  481. 

That  a  partj^  is  not  entitled  to  the  date  of  an  earlier 
application  because  the  claim  was  not  made  therein,  and 
because  there  was  included  a  disclaimer  of  it,  relates  to 
the  right  of  the  party  to  make  the  claims.  Dittgen  v. 
rarmenter,  99  O.  G.  2966;  1902  C.  D.  218. 

That  a  party's  application  did  not  disclose  tlie  inven- 
tion until  a  certain  amendment  was  filed  therein,  is  a 

46 


contention  that  he  has  no  right  to  make  the  claims,  and 
should  be  presented  in  a  motion  to  dissolve  and  not  in  a 
motion  to  shift  the  burden  of  proof.  Tripp  v.  Wolff  v. 
Jones,  103  0.  G.  2171  (1903). 

The  fact  that  an  issue  includes  an  element  of  a  com- 
bination which  one  party  does  not  disclose,  is  ground  for 
dissolution  on  the  ground  that  such  party  has  no  right 
to  make  the  claim.  Bodwitch  v.  Todd,  98  0.  G.  792; 
1902  C.  D.  27. 

Inoperativeness  should  not  be  insisted  upon  in  a  mo- 
tion to  dissolve  except  in  a  clear  case.  Bodwitch  v.  Todd, 
98  0.  G.  792. 

If  a  party's  structure  is  capable  of  performing  the 
function  in  question,  it  is  immaterial  whether  or  not  his 
description  refers  to  it.  Western  Electric  Co.  v.  Sperry 
Electric  Co.,  65  0.  G.  597 ;  Fenivick  v.  Dixon  &  Dixon, 
15  Gour.  71-23  (Sept.,  1903). 

88.  Disclaimer — Rule  107.  Rule  107  provides:  An 
applicant  involved  in  an  interference  may,  with  the  writ- 
ten consent  of  the  assignee,  when  there  has  been  an  as- 
signment, before  the  date  fixed  for  the  filing  of  his  pre- 
liminary^ statement  (Rule  110),  in  order  to  avoid  the 
continuance  of  the  interference,  disclaim  under  his  own 
signature,  attested  by  two  witnesses,  the  invention  of  the 
particular  matter  in  issue,  and  upon  such  disclaimer  and 
cancellation  of  any  claims  iuA^olving  such  interfering 
matter,  judgment  shall  be  rendered  against  him,  and  a 
copy  of  the  disclaimer  shall  be  embodied  in  and  form 
part  of  his  specification  (See  Rule  182). 

Were  a  disclaimer  is  filed,  such  disclaimer  only  ex- 
tends to  the  particular  claim  or  claims  as  to  which  the 
interference  has  been  declared,  and  the  judgment  fol- 
lowing does  not  effect  the  question  of  invention  as  to 
other  claims,  although  they  may  contain  other  interfer- 
ing matter.  Reed  v.  Concrete  Machinery  Co.,  et  al.,  239 
Fed.  869  (C.  C.  A.  7th  Cir.  1916).  An  assignee  of  entire 
interest  may  disclaim  invention.     Moore  &  McKee  v. 

47 


Bradley,  etc.,  ISO  0.  G.  879  (1912).  A  judgment  of 
prioritr  may  be  avoided  by  disclaimer,  or  by  filing  an  ap- 
priority  may  be  avoided  by  disclaimer,  or  by  filing  an  ap- 
only.    Fend  v.  Miggett,  223  0.  G.  649  (1915). 

Disclaimer  by  Refusal  to  Make  Claims  TJiider  Eule  96. 
If  an  applicant  refuses  to  make  claims  suggested  under 
Rule  96,  he  disclaims  the  interfering  subject  matter. 
Fd-ris.  114  0.  G.  541. 

Oral  Disclaimer.  If  a  party  to  an  interference  in  an- 
swer to  a  question  propounded  to  him  in  the  taking  of 
testimony,  states  that  he  does  not  claim  to  be  the  inven- 
tor of  the  subject  matter  in  controversy,  a  judgment  of 
priority  can  not  be  awarded  to  him.  Oliver  v.  Felbcl, 
100  0.  G.  23S4 ;  1902  C.  D.  565.  A  statement  by  an  ap- 
plicant to  his  assignee  that  he  does  not  regard  himself 
as  the  inventor  of  the  subject  matter  claimed,  is  not  suf- 
ficient to  oA'ercome  his  oath  that  he  is  the  inventor  there- 
of, especially  where  it  appears  that  he  is  hostilje  to  his 
assignee.    GiUons  v.  Peller,  127  0.  G.  3643  (1907). 

89.  Miscellaneous  Motions  to  Dissolve.  The  grounds 
for  dissolving  interferences  are  set  forth  in  Rule  122,  and 
a  motion  which  does  not  state  any  of  the  grounds  therein 
enumerated,  is  not  a  proper  motion.  Keith  v.  George,  16 
Gour.  19-4.  However,  there  have  been  many  attempts 
of  a  miscellaneous  character  to  dissolve  interferences  for 
grounds  not  mentioned  in  Rule  122.  and  which  have  been 
invariably  refused  transmission,  illustrations  of  which 
are.  that  a  party  failed  to  file  a  supplemental  oath,  or 
that  the  oath  is  defective.  The  filing  of  an  oath  is  an  ex 
parte  matter  and  not  a  ground  for  dissolution.  Graham 
V.  Langhaw,  164  0.  G.  739  (1911)  ;  Rcitzcl  v.  Harmatta, 
161  0.  G.  1043  (1910) ;  Howe  v.  Brinkmann,  133  0.  G. 
515  (1908)  ;  Emmet  v.  Fullagcr,  130  0.  G.  2719  (1907). 
Motions  to  dis.solve  upon  the  grounds  of  public  use,  and 
ba.sed  upon  ex  parte  affidavits,  will  not  be  transmitted. 
Davis  V.  Srrift,  96  0.  G.  2409;  1901  C.  D.  134:  Shrum 
V.  Baningartcn,  104  0.  G.  577  (1903);   Dunn  v.  Doug- 

48 


lass,  184  0.  G.  804  (1912)  ;  Barhcr  v.  Wood,  128  0.  G. 
2835  (1907).  Nor  where  it  is  alleged  that  the  structure 
of  one  of  the  parties  is  greatly  superior  to  that  of  the 
other.  Kolh  v.  Hemingway  v.  Curtis,  122  0.  G.  1397 
(1906).  Nor  on  the  ground  that  a  party  is  intending  to 
rely  upon  a  certain  machine  in  the  production  of  his 
testimony.  Barr  v.  Bugg,  122  0.  G.  2061  (1906).  Nor 
where  the  question  raised  is  one  involving  the  burden 
of  proof.  Toivnsend  v.  Ehret,  etc.,  137  0.  G.  1484  (1908). 
Nor  where  it  is  alleged  that  an  affidavit  filed  under  Rule 
75  is  false.  Schider  v.  Barnes,  etc.,  140  0.  G.  509  (1909). 
Nor  that  a  party  has  no  right  to  make  the  claims  because 
of  his  delay  in  making  them.  Manly  v.  Williams,  21 
Gour.  85-11  (Aug.,  1909)  ;  Long  v.  Flagg,  etc.,  190  0. 
G.  265  (1913).  Nor  that  the  claims  were  formulated  by 
the  Examiner.  Mixsell  v.  Lovejoy,  186  0.  G.  294  (1912). 
Nor  upon  the  ground  of  intervening  rights  in  the  issu- 
ance of  a  patent.  Perkins  &  Reqna  v.  Weeks,  188  0.  G. 
1052  (1913).  Nor  that  the  invention  was  made  by  a 
third  party.  Welch  v.  Aufiero,  219  0.  G.  930  (1915). 
Nor  merely  alleging  abandonment  of  the  invention  by 
reason  of  delay  in  renewing  application.  GeJiring  & 
Cadden  v.  Barry,  etc.,  225  0.  G.  371  (1914).  Nor  al- 
leging prior  knowledge  and  use  as  a  bar.  Murphy  v. 
Borland,  132  0.  G.  231,  and  cases  there  cited.  Nor  that 
the  issues  are  substantially  the  same  as  that  of  a  prior 
interference.  Sugden  &  Pidgin  v.  Laganke,  etc.,  130  0. 
G.  1484  (1907).  Nor  an  allegation  by  a  sole  inventor 
that  himself  and  another  as  joint  inventors  did  not  in- 
vent the  device.  Bahcock  v.  Pickard,  etc.,  21  Gour.  85- 
13  (Nov.,  1909)  ;  Jarvis  v.  Quincy,  113  0.  G.  550.  Nor 
where  the  motion  is  based  on  affidavits  as  to  inoperative- 
ness. Horton  v.  Leonard,  155  0.  G.  305 ;  Keyes  &  Kraus 
V.  Yunck,  182  0.  G.  248  (1912).  Nor  where  the  facts 
set  forth  in  the  motion  are  based  upon  testimony  taken. 
Ghallenherger  v.  Andreivs,  100  0.  G.  3013 ;  1902  C.  D. 
346;  Sullivan  v.  Thompson,  94  0.  G.  585;  1902  C.  D. 
6  49 


21.  Nor  that  one  of  the  parties  is  not  an  original  inven- 
tor but  derived  his  knowledge  from  another.  Corey,  etc., 
■v.  Blakey,  115  0.  G.  1328  (1905).  Nor  on  the  ground 
that  a  party  desires  to  present  claims  of  a  broader  na- 
ture, since  proofs  may  be  offered  in  the  interference  to 
cover  any  broader  claims  which  the  applicant  may  later 
present.  Phelps  v.  Wormley,  etc.,  118  O.  G.  1069  (1905). 
Nor  on  the  ground  that  the  moving  party  is  shown  by  the 
testimony  in  another  interference  to  be  the  first  inven- 
tor. Newel  V.  Rose,  119  0.  G.  337  (1905)  ;  Dorr  v.  Ames 
&  Rearson,  15  Gour.  35-6  (June,  1903).  Nor  where  the 
question  presented  is  one  which  may  be  determined  on 
final  hearing  and  which  should  be  so  determined.  Stru- 
Ue  V.  Young,  121  0.,G.  339;  1906  C.  D.  95. 

EVIDENCE. 

90.  The  subject  of  evidence  as  here  treated  has  special 
reference  to  interference  proceedings  and  such  questions 
as  are  likel}^  to  arise  in  presenting  proofs  in  such  cases. 

91.  Burden  of  Proof.  Kule  116  provides  that  the  sev- 
eral parties  to  interferences  will  be  presumed  to  have 
made  the  inventions  in  the  order  in  which  they  filed  their 
completed  applications  for  patents  clearly  illustrating 
and  describing  the  invention;  and  the  burden  of  proof 
shall  rest  upon  the  party  who  shall  seek  to  establish  a 
different  state  of  facts. 

92.  What  is  the  Filing  Date.  The  filing  dates  are  the 
respective  dates  on  which  the  applications  were  filed  in 
the  Patent  Office.  However,  if  the  application  is  a  true 
division  of  an  earlier  application,  then  the  later  applica- 
tion takes  the  filing  date  of  the  earlier  application.  This 
is  only  true  where  tlie  earlier  application  clearly  dis- 
closes the  same  invention.  Lov)ry  v.  Spoon,  110  0.  G. 
858;  Meyer  v.  Sarfert,  96  0.  G.  1037;  Cain  v.  Park, 
86  0.  G.  797,  14  App.  D.  C.  42 ;  Bundy  v.  Rmnhargcr, 
92  0.  G.  2002;    Toledo  Scale  Co.  v.  Dunn,  214  0.  G. 

50 


1321,  43  App.  D.  C.  377 ;   Curtis  v.  Lindmark,  171  0.  G. 
484  and  215,  37  App.  D.  C.  322. 

Earlier  Application  as  Evidence.  Even  though  the 
Primary  Examiner  fails  to  include  an  earlier  application 
by  one  of  the  parties,  in  the  declaration  of  interference, 
he  is  not  deprived  of  the  benefit  of  it,  if  it  discloses  the 
invention,  since  he  may  introduce  it  as  a  part  of  his  evi- 
dence. Mmiro  V.  Alexander,  106  0.  G.  1000  (1903)  ; 
Greenawalt  v.  Mark,  111  0.  G.  2224;  Oshorne  v.  Arm- 
strong, 114  0.  G.  2091. 

93.  Divisional  Application — Evidence.  The  action  of 
the  Primary  Examiner  as  to  what  is  and  what  is  not  a 
division,  is  not  controlling  upon  the  Examiner  of  Inter- 
ferences, since  it  is  a  matter  relating  to  priority  on  which 
it  is  the  peculiar  province  of  the  Examiner  of  Interfer- 
ences to  pass  judgment,  and  where  the  Primary  Exam- 
iner permitted  an  application  to  be  amended  by  adding 
what  in  his  opinion  was  not  new  matter,  such  ruling  is 
subject  to  the  independent  judgment  of  the  Examiner  of 
Interferences.  Rohinson  v.  Copeland,  102  0.  G.  466 
(1903). 

94.  Official  Records  as  Evidence.  Subdivision  (e)  of 
Rule  154,  provides  that  upon  notice  given  to  the  oppo- 
site party  before  the  closing  of  the  testimony,  any  of- 
ficial record,  and  nwy  special  matter  contained  in  a 
printed  publication,  if  competent  evidence  and  pertinent 
to  the  issue,  may  be  used  as  evidence  at  the  hearing. 
This  section  relates  to  two  classes  of  evidence,  official 
records  and  printed  publications. 

An  official  record  is  a  record  kept  by  an  official,  though 
usually  it  must  be  one  required  by  law  to  be  kept.  Thus 
in  the  State  of  New  York,  where  death  certificates  are 
filed  in  the  Health  Department,  it  was  held  tliat  such 
certificates  are  ''Official  Records"  within  the  meaning  of 
Code  Civil  Procedure,  Sec.  959,  providing  that  certain 
official  records  shall  be  presumptive  evidence  of  their 
contents.    Rohinson  v.  Supreme  Commandery,  Order  of 

51 


Golden  Cross,  79  N.  Y.  Supp.  13,  16.  Judgments,  orders 
and  decrees  are  property  proved  by  the  minutes  or  cal- 
endar entries  where  the  latter  form  the  legal  record 
thereof,  but  if  the  record  consists  of  a  judgment  roll  or 
some  more  formal  writing,  the  latter  if  in  existence,  is 
the  proper  evidence.  It  is  not  the  purpose  to  here  under- 
take to  state  the  various  classes  of  official  records  and 
how  they  may  be  introduced  in  e%'idence,  but  merely  to 
call  attention  to  the  subject  in  a  general  way  to  illus- 
trate the  class  of  evidence  that  would  come  within  the 
foregoing  subdivision  of  Rule  154.  For  an  extended  dis- 
cussion of  the  subject  of  Official  Records  as  e%'idence, 
reference  is  made  to  Encyclopedia  of  Evidence,'  Vol.  10, 
page  716. 

Testimony  taken  in  another  action  is  not  rendered  ad- 
missible by  the  introduction  of  the  record  in  such  ac- 
tion. Encyclopedia  of  EWdeuce,  Vol.  10,  page  761.  The 
Rules  of  Practice  relating  to  the  introduction  of  testi- 
mony taken  in  another  interference,  follow  in  a  general 
Avay  the  rules  of  e^adence  in  courts  of  law  and  recognize 
tliat  such  testimony  is  not  an  official  record  referred  to 
in  subsection  (e)  of  Rule  154.  Therefore  special  provi- 
sion is  made  for  introducing  testimony  taken  in  another 
interference.    Rule  157. 

An  earlier  application  may  become  available  as  e\i- 
dence,  even  though  not  involved  in  the  interference,  by 
introducing  a  certified  copy  thereof.  To  avoid  any  ele- 
ment of  doubt  there  should  also  be  introduced  a  certi- 
fied copy  of  the  filing  date,  or  of  the  notice  of  allow- 
ance, if  allowed.  In  Cain  v.  Pari',  14  App.  D.  C.  42; 
1899  C.  D.  278,  86  0.  G.  797,  a  certified  copy  of  the  ap- 
plication had  been  introduced  in  evidence  and  the  Com- 
missioner took  judicial  notice  of  his  own  records  and 
found  that  the  application  was  allowed  and  a  pending 
application  when  the  application  in  interference  was 
filed.  In  Robinson  v.  Seelinger,  116  0.  G.  1735  (1905), 
25  App.  D.  C.  237,  thn  Examiners  in  Chief  had  taken 

52 


judicial  notice  of  the  filing  of  a  prior  application  (which 
had  not  been  introduced  in  evidence)  and  the  court  held 
that  it  could  not  be  expected  to  consider  something  which 
is  not  a  record  open  to  the  public  and  which  was  in  no 
form  before  the  court  as  was  the  application  which  was 
taken  judicial  notice  of  in  Cain  v.  Park,  supra.  It  would 
seem,  therefore,  that  while  the  office  may  take  judicial 
knowledge  of  its  own  action  upon  an  application  and  the 
date  on  which  such  action  was  taken,  it  is  necessary  to 
introduce  a  certified  copy  of  the  application  to  make  it 
available  as  evidence. 

Any  special  matter  contained  in  a  printed  publica- 
tion may  be  used  as  evidence  at  the  hearing  if  before 
closing  the  testimony  notice  is  given  to  the  opposite  party 
as  provided  in  subdivision  (e)  of  Rule  154,  of  intention 
to  so  use  the  same.  A  question  may  sometimes  arise  as  to 
what  is  and  what  is  not  a  printed  publication.  In  Wal- 
ker on  Patents,  Sec  56,  it  is  said:  "A  printed  publica- 
tion is  anything  which  is  printed,  aud  without  any  in- 
junction of  secrecy,  is  distributed  to  any  part  of  the 
public  in  any  country ;  and  such  publication  may  nega- 
tive novelty.  Indeed,  it  seems  reasonable  that  no  actual 
distribution  need  occur,  but  that  exposure  of  printed^ 
matter  for  sale  is  enough  to  constitute  a  printed  publi- 
cation. But  the  mere  existence  of  a  printed  thing  is 
not  a  printed  publication,  though  its  deposit  in  a  public 
library  is.  A  drawing,  in  a  prior  patent  or  printed  pub- 
lication, if  its  meaning  is  really  undeniable,  may  negative 
novelty. ' ' 

95.  Continuous  Application  Takes  Filing  Date  of 
Original  Application.  Where  an  application  is  a  continu- 
ation of  a  prior  application  which  became  abandoned, 
the  applicant  is  entitled  to  the  filing  date  of  the  earlier 
application  as  to  everything  that  it  discloses,  even  though 
the  later  application  may  contain  new  matter  not  shown 
in  the  original  application.  Tripler  v.  Linde,  101  0.  G. 
2288;   1902  CD.  444;   Gilbert-Stringer  v.  Johnson,  102 

53 


0.  G.  621  (1903) ;  Cain  v.  Park,  14  App.  D.  C.  42,  86  0. 
G.  797. 

Identical  Filing  Dates.  Where  both  applications  are 
filed  ou  the  same  day  it  is  the  practice  of  the  office  to 
throw  the  burden  upon  the  one  who  was  last  to  execute 
his  application. 

96.  Burden  as  Between  Applicant  and  Patentee.  Where 
through  inadvertence  an  interference  was  not  declared 
between  two  pending  applications  for  the  same  inven- 
tion until  after  a  patent  had  been  issued  to  the  junior 
applicant,  the  patentee  does  not  thereby  gain  any  ad- 
vantage with  respect  to  the  burden  of  proof,  but  is  in  the 
same  situation  he  would  have  been  had  his  patent  not 
been  granted.  Evans  v.  Associated  Automatic  Sprin- 
kler Co.,  241  Fed.  252,  229  Fed.  1007 ;  Cutler  v.  Leonard, 
31  App.  D.  C.  297,  136  0.  G.  438 ;  Andrews  v.  Nilson, 
123  0.  G.  1667  (1906),  27  App.  D.  C.  451. 

If  the  patentee  was  the  last  to  file  he  is  properly  the 
junior  party.  Furynan  v.  Dean,  114  0.  G.  1552 ;  Miehle 
V.  Read,  18  App.  D.  C.  128,  96  0.  G.  426 ;  1901  C.  D. 
396 ;  Paul  v.  Hess,  115  0.  G.  251,  24  App.  D.  C.  462. 

Patent  Granted  During-  Forfeiture  of  Application. 
Where  a  party  permits  his  application  to  become  forfeit- 
ed, and  while  it  is  forfeited  another  files  an  application 
and  secures  a  patent  for  the  same  invention  which  is  put 
in  interference  with  a  renewal  of  the  forfeited  applica- 
tion, the  burden  of  proof  is  upon  the  renewal  applicant 
notwithstanding  the  earlier  date  of  his  first  application. 
Lutz  V.  Lewis,  110  0.  G.  2014.  There  is  a  distinction  as 
to  the  burden  of  proof  as  between  a  patent  granted  while 
opposing  party's  case  is  pending  and  a  patent  granted 
while  opposing  party's  case  is  forfeited.  Lowry  v.  Spoon, 
110  0.  G.  858. 

97.  Proof  Beyond  a  Reasonable  Doubt — In  What  Cases. 
Where  one  party  is  a  patentee  and  the  other  party  filed 
his  application  after  the  issue  of  the  patent,  the  burden 
is  upon  tlie  applicant  to  prove  beyond  a  reasonable  doubt 

54 


that  he  reduced  his  invention  to  practice  before  the  pat- 
ent was  granted.  French  v.  Ilalcornl),  26  App.  D.  C. 
307,  120  0.  G.  1824  (1905)  ;  Cheniey  v.  Clauss,  25  App. 
D.  C.  15,  116  0.  G.  597  (1905)  ;  Sendelhach  v.  Gillette, 
109  0.  G.  276,  22  App.  D.  C.  168;  Talhot  v.  Monell,  23 
App.  D.  C.  108,  109  0.  G.  280 ;  Sharer  v.  McHenry,  98 
0.  G.  585;  1902  C.  D.  503  (See  also  98  0.  G.  I486;  1902 
C.  D.  514,  103  0.  G.  2174  and  1165). 

Reasonable  Doubt  Defined.  Efforts  of  courts  to  define 
what  is  meant  by  "reasonable  doubt"  have  not  resulted 
in  any  established  definition.  However  the  definition 
stated  in  Words  &  Phrases,  Vol.  7,  page  5964,  and  sup- 
ported by  abundant  authorities,  is  as  follows : 

"Evidence  is  sufficient  to  remove  a  reasonable  doubt 
when  it  convinces  the  judgment  of  an  ordinarily  prudent 
man  of  the  truth  of  a  proposition  with  such  force  that 
he  would  voluntarily  act  upon  that  conviction,  without 
hesitation,  in  his  own  most  important  affairs."  Stout  v. 
State,  90  Ind.  1,  12;  Jarrcll  v.  State,  58  Ind.  293,  296; 
Arnold  v.  State,  23  Ind.  170 ;  Troop  v.  State,  92  Ind.  13- 
16;  Harris  v.  State,  58  N.  E.  75,  77,  155  Ind.  265;  Wil- 
liams V.  U.  S.  69  S.  W.  871,  874 ;  MUes  v.  United  States, 
103  U.  S.  304,  309,  26  L.  Ed.  481 ;  United  States  v.  Allis, 
73  Fed.  165,  167 ;  United  States  v.  Kenney,  90  Fed.  257, 
262;  United  States  v.  Yoiitsey,  91  Fed.  864,  868;  United 
States  V.  Fitzgerald,  91  Fed.  374,  376;  United  States  v. 
Wright,  16  Fed.  112,  114;  United  States  v.  Niemeyer,  94 
Fed.  147,  149;  United  States  v.  Politzer,  59  Fed.  273, 
279 ;  Gannon  v.  People,  127  111.  507 ;  People  v.  Hughes, 
137  N.  Y.  29;  Ryan  v.  State,  83  "Wis.  486;  Butler  v. 
State,  92  Ga.  601. 

98.  Shifting  the  Burden  of  Proof.  It  often  becomes 
a  matter  of  controversy  as  to  which  party  has  the  burden 
of  proof  and  this  usuall}^  arises  out  of  the  uncertainty 
about  the  filing  dates  to  which  the  respective  parties  are 
entitled.  A  party  may  discover  after  an  interference  has 
been  declared  that  he  is  made  the  junior  party  therein 

55 


where  as  he  should  have  been  made  the  senior  party  by 
reason  of  an  earlier  application  filed  by  him,  or  by  rea- 
son of  his  application  being  a  continuing  one,  and  which 
discloses  exactly  the  same  invention  as  that  involved  in 
interference.  Under  such  circumstances  he  may  make 
a  motion  to  shift  the  burden  of  proof.  This  motion  is 
within  the  jurisdiction  of  the  Examiner  of  Interferences 
and  not  the  Primary  Examiner,  and  there  is  no  appeal 
from  his  decision  prior  to  final  hearing.  Eoiilet  d;  Nich- 
olson V.  Adams,  ll-l:  0.  G.  1827;  Scott  v.  Southgate,  121 
0.  G.  689;    Osborne  v.  Armstrong,  lU  0.  G.  2091. 

Evidence  to  Support  the  Motion.  Xo  evidence  is  nec- 
essary to  support  the  motion  where  the  record  in  the 
respective  cases  show  all  the  facts  necessary  to  determine 
the  question.    Bundg  v.  Bumtargfr.  92  0.  G.  2001. 

99.  Foreign  Application — Burden.  WTiere  a  party 
claims  the  benefit  of  a  foreign  application,  the  notice  of 
interference  will  be  prepared  in  accordance  with  the 
date  of  filing  of  the  applications  in  this  country ;  but  the 
Examiner  of  Interferences  may,  upon  a  proper  showing, 
shift  the  burden  of  proof  and  give  the  party  the  benefit 
of  the  filing  date  of  his  foreign  application.  Steel  d; 
Steel  V.  Myers,  205  0.  G.  1021 ;   191-1  C.  D.  74. 

100.  Priority — Evidence  in  Interferences.  The  testi- 
mony taken  in  an  interference  must  be  confined  to  the 
question  of  priority  of  invention  of  the  issue.  Brill  v. 
Adams  v.  Velelacher,  99  0.  G.  2966;  1902  C.  D.  220. 

Priority  means  priority  in  point  of  time  to  make  the 
invention.  Trufant  v.  Brindle  v.  Brown,  101  0.  G.  1608; 
1902  C.  D.  397. 

Testimony  must  not  be  at  variance  with  the  prelim- 
inary statement,  as  to  conception,  disclosure  and  reduc- 
tion to  practice,  and  testimony  taken  tending  to  estab- 
lish earlier  dates,  if  admitted,  will  be  effective  only  for 
the  purpose  of  establishing  the  dates  alleged.  Cross  v. 
Phillips,  14  App.  D.  C.  228,  87  0.  G.  1399;  1899  C.  D. 
342;  Funk  v.  Matterson  v.  Haines,  100  0.  G.  1563;  1902 

56 


C.  D.  297,  20  App.  D.  C.  28o,  100  0.  G.  1764;  1902  C.  D. 
553;  Lowrie  v.  Taylor  cO  Taylor,  118  0.  G.  1681  (1905)  ; 
Fowler  v.  Boyce,  118  0.  G.  2534  (1905),  27  App.  D.  C. 
55,  122  0.  G.  1726  (1906),  121  0.  G.  1014;  Foivler  v. 
McBerty,  121  0.  G.  1015  (1906)  ;  Lowrie  v.  Taylor  & 
Taylor,  27  App.  D.  C.  522,  123  0.  G.  1665  (1906)  ;  Her- 
man V.  Fullman,  109  0.  G.  1888 ;  Hammond  v.  Basch, 
115  0.  G.  804,  24  App.  D.  C.  469. 

101.  Conception — Evidence  of.  A  conception  of  the 
mind  is  not  an  invention  until  represented  in  some  phy- 
sical form.  Clark  Thread  Co.  v.  Wiliamantic  Linen  Co., 
140  U.  S.  489,  35  L.  Ed.  521,  525 ;  Voightmami,  et  al., 
V.  Perkinson,  et  al.,  138  Fed.  56 ;  Mergenthaler  v.  Scud- 
der,  11  App.  D.  C.  264,  81  0.  G.  1417  (1897).  In  some 
instances  statements  and  conversations  of  the  inventor 
maybe  shown  to  establish  conception  of  the  invention. 
In  many  cases  of  inventions,  it  is  hardly  possible  in  any 
other  manner  to  ascertain  in  the  precise  time  and  exact 
origin  of  the  particular  invention.  The  invention  itself 
is  an  intellectual  process  or  operation ;  and,  like  all  other 
expressions  of  thought,  can  in  many  cases  be  scarcely 
made  known,  except  by  speech.  The  invention  may  be 
consummated  and  perfect,  and  may  be  susceptible  of 
complete  description  in  words,  a  month,  or  even  a  year 
before  it  can  be  embodied  in  visible  form,  machine  or 
composition  of  matter.  Conversations  and  declarations 
of  the  inventor  that  he  made  a  certain  invention,  and  de- 
scribing its  details  and  explaining  its  operations,  are 
properly  to  be  deemed  an  assertion  of  his  right,  at  that 
time,  as  an  inventor  to  the  extent  of  the  facts  and  details 
which  he  then  makes  known ;  although  the  date  of  his 
invention  in  such  case  would  be  the  time  when  he  makes 
known  the  invention  and  not  the  time  when  he  claims  to 
have  first  had  it  in  mind,  if  that  be  a  previous  time. 
Philadelphia  tO  Trenton  Bailroad  Co.  v.  Stimpson,  14 
Peters  448,  10  U.  S.  Law  Ed.  535,  542.  If  the  inventor 
orally  describes  his  invention  with  sufficient  clearness, 

57 


even  though  he  does  not  state  all  the  details,  that  an 
artisan  can  work  out  the  details,  he  has  disclosed  an  in- 
vention, Westinghouse  Electric  &  Mfg.  Co.  v.  Stanley 
Instrument  Co.,  133  Fed.  167. 

Where  an  oral  statement  by  the  inventor  is  relied  upon 
to  prove  invention  it  must  be  shown  not  only  that  the 
statement  was  sufficiently  clear  and  complete  to  enable 
one  skilled  in  the  art  to  make  the  machine,  or  practice 
the  process  or  art,  but  also  that  it  was  made  to  one  who 
understood  it  and  remembered  it  with  sufficient  accuracy 
to  enable  him  to  communicate  it  to  the  world.  Stephens 
V.  Salishurtj,  1  McArthur's  Patent  Cases,  385. 

102.  Kinds  of  Evidence  to  Prove  Conception.  The  evi- 
dence may  consist  of  oral  or  written  description  of  the 
invention,  or  drawing  or  model  or  partly  of  one  of  these 
forms  of  evidence  and  partly  of  another.  But  we  have 
already  seen  that  the  description  or  drawing,  or  model, 
must  be  known  to  some  one  other  than  the  inventor  and 
the  date  of  invention  is  the  date  upon  which  it  is  made 
known  to  such  other  person  or  persons,  hence  this  brings 
us  to  the  consideration  of  the  question  of  disclosure,  and, 
later  the  corroboration  of  the  inventor. 

Disclosure.  Disclosure  in  the  sense  of  the  patent  law 
must  be  made  ordinarily  to  persons  competent  to  under- 
stand and  appreciate  the  alleged  invention.  Merely 
showing  a  device  or  drawing  to  witnesses  who  had  no 
understanding  of  the  invention,  can  not  be  considered  a 
disclosure.  It  is  therefore  plain  that  in  proving  dis- 
closure it  should  be  shown  clearly  that  the  person  to 
whom  the  disclosure  was  made,  understood  the  invention, 
remembered  it  with  sufficient  accuracy  to  communicate 
it  to  others,  or  could  recognize  the  identical  drawings  or 
device  exhibited  to  him  and  explain  their  meaning,  or 
operation,  or  construction.  Furthermore  in  order  to 
make  such  evidence  available  to  establish  a  date  of  in- 
vention, the  witness  or  witnesses  to  whom  the  disclosure 
was  made  must  be  able  to  in  some  manner  fix  the  time  of 

58 


such  disclosure  with  reasonable  certainty,  and,  where 
they  are  called  upon  to  testify  some  years  after  the 
event,  great  care  should  be  exercised  to  establish,  as  near 
as  possible,  a  definite  time  of  disclosure  which  will  not 
be  dependent  upon  the  uncertainties  of  memory  as  to 
when  such  event  took  place.  Eastman  v.  Houston,  95  0. 
G.  20G4;  1902  C.  D.  386,  18  App.  D.  C.  135-140;  Henggi 
V.  Dallmeyer,  253  0.  G.  514.  A  disclosure  to  one  skilled 
in  the  art  to  which  the  invention  belongs,  is  sufficient. 
Persons  "skilled  in  the  art"  includes  careful  workmen 
who  are  skilled  in  the  particular  line  of  business  in 
which  they  are  engaged.  Pupin  v.  Hut  in  i&  Lehlanc  v. 
Stone,  100  0.  G.  931 ;  1902  C.  D.  269.  Where  the  wit- 
nesses make  it  appear  that  the  inventor  had  in  mind  the 
result  to  be  accomplished,  but  not  the  means  by  which  it 
was  to  be  done,  conception  and  disclosure  is  not  estab- 
lished. CoU  V.  Goehel,  23  App.  D.  C.  75, 108  0.  G.  1591 ; 
Brooks  V.  Hillard,  106  0.  G.  1237  (1903)  ;  Fenner  v. 
Blake,  30  App.  D.  C.  507,  134  0.  G.  2244  (1908).  The 
disclosure  must  be  full  and  clear  as  to  all  essential  ele- 
ments of  the  invention  and  such  as  was  sufficient  in  it- 
self to  enable  the  party  to  whom  the  disclosure  was  made 
to  give  the  invention  practical  form  and  effect  without 
the  exercise  of  invention  on  his  part.  Sendelhach  v. 
Gillette,  22  App.  D.  C.  168,  109  0.  G.  276.  Disclosing 
matters  which  are  old  in  the  art,  is  not  disclosing  inven- 
tion. French  v.  Holconih,  115  0.  G.  506  (1905).  Where 
the  inventor  presents  drawings  witnessed  and  dated,  it 
should  appear  that  the  witnesses  whose  names  are  signed 
thereto  not  only  signed  them  on  the  date  appearing  on 
the  drawings,  but  that  they  understood  the  invention  and 
that  the  drawings  at  the  time  they  are  offered  in  evidence 
are  in  the  same  condition  that  they  were  when  they  were 
witnessed.  Kirkcgaard  cO  Jchscn  v.  Ries,  125  0.  G.  1700 
(1906).  Where  the  wife  of  an  inventor  is  offered  as  a 
witness  to  prove  disclosure,  it  has  been  held  that  her  tes- 
timony should  be  corroborated.     The  soundness  of  this 

59 


ruling  may  well  be  doubted.  Hatter  v.  Barrett,  114  0. 
G.  975.  Where  au  original  application  is  relied  upon  for 
disclosure,  it  must  appear  that  the  invention  in  issue  is 
disclosed  in  that  application  as  originally  filed.  Mc- 
EmgJit  V.  Pohle,  30  App.  D.  C.  92, 130  0.  0.2069  (1907)  ; 
McMulkin  v.  Bollee,  126  0.  G.  1356  (1906).  (See  Reduc- 
tion to  Practice  and  Dat€s. )  It  is  not  necessary  that  an 
apparatus  used  to  carry  out  a  process  be  disclosed  in 
order  to  constitute  a  disclosure  of  the  process.  Osborne 
V.  Armstrong,  19  Gour.  3-8  (Jan.,  1907).  Work  done  on 
an  invention  in  a  foreign  country  is  not  available  as  evi- 
dence to  prove  conception  or  reduction  to  practice  in  the 
United  States,  R.  S.  Sec.  4923.  DeKando  v.  Armstrong, 
37  App.  D.  C.  314,  169  0.  G.  1185.  A  disclosure  to  one 
of  two  joint  inventors  is  a  disclosure  to  both.  General 
Electric  Co.  v.  Steinlerger,  208  Fed.  699-714.  Circum- 
stances surrounding  an  alleged  disclosure  of  invention 
may  be  such  as  to  discredit  the  evidence,  as  where  Jenner 
saw  a  notice  of  Dickinson's  invention  in  1900,  and  did 
not  file  his  own  application  for  patent  until  he  was  in- 
duced to  do  so  by  Hildreth  in  1902,  it  was  held  that  no 
value  can  be  attached  to  testimony  on  his  behalf  that  he 
made  the  invention  in  1899.  Jenner  v.  DicJiinson;  Thi- 
hodeau  v.  Dickinson,  117  0.  G.  600  (1905).  And  where 
for  several  years  after  the  alleged  conception,  as  ap- 
peared from  the  evidence,  manufacturers  were  demand- 
ing a  device  of  the  kind  in  issue  and  the  partj'  made  no 
disclosure  to  such  manufacturers  nor  any  attempt  to  re- 
duce to  practice,  but  endeavored  to  sell  patents  upon 
prior  devices  and  failed  on  the  express  ground  that  they 
did  not  possess  the  advantages  found  in  the  present  in- 
vention, it  was  held  that  his  claims  to  early  conception 
and  disclosure  are  not  entitled  to  consideration.  Hope, 
Jr.,  V.  Yoigt,  115  O.  G.  1585  (1905),  25  App.  D.  C.  22. 

103.  Corroboration  of  Inventor.  Corroborating  evi- 
dence means  evidence  which  tends  to  support  and  render 
more  probable  some  other  evidence — generally  that  al- 

60 


ready  produced — to  the  same  point  and  like  in  character. 
Encyclopedia  of  Evidence,  Vol.  3,  page  674. 

The  mere  uncorroborated  statements  of  an  inventor  are 
not  sufficient  to  show  conception,  disclosure  or  reduction 
to  practice.  The  same  rule  holds  true  as  to  joint  inven- 
tors because  joint  inventors  constitute  but  a  single  party 
and  their  minds  and  interests  become  one,  hence  they  can 
not  corroborate  each  other.  Freeman  v.  Garrels  &  Kim- 
hall,  102  0.  G.  1777  (1903)  ;  Mergenthaler  v.  Scuddcr, 
11  App.  D.  C.  264,  81  0.  G.  1477;  Garrels,  et  al,  v. 
Freeman,  103  0.  G.  1683,  21  App.  D.  C.  207;  Paul  v. 
Hess,  113  0.  G.  847 ;  Podelsak  &  Podelsak  v.  Mclnner- 
ney,  26  App.  D.  C.  399,  118  0.  G.  835  (1905),  120  0.  G. 
2127.  A  witness  may  be  able  to  corroborate  the  inventor 
as  to  certain  details  of  his  invention,  even  though  his 
testimony  does  not  corroborate  him  as  to  every  detail 
sought  to  be  established.  Dunhar  v.  Sckellengers,  125  0. 
G.  348  (1906).  Statements  in  an  inventor's  note  book, 
alleged  to  discloss  the  invention  in  issue,  are  insufficient 
to  prove  conception,  where  it  does  not  appear  that  the 
entr}'  was  ever  shown  to  anyone.  French  v.  Holcomh, 
26  App.  D.  C.  307,  120  0.  G.  1824  (1905).  Vague  and 
indefinite  corroborating  evidence  of  witnesses  is  insuffi- 
cient to  overcome  a  prior  filing  date  of  an  opposing 
party.  McKnight  v.  Pohle  &  Croasdale,  105  0.  G.  977 ; 
Steinmetz  v.  Thomas,  31  App.  D.  C.  574,  137  0.  G.  479 
(1908)  ;  Smith  v.  Foley,  et  al,  136  0.  G.  847  (1907)  ; 
Burson  v.  Vogel,  125  0.  G.  2361  (1906).  The  evidence 
should  be  clear  and  specific  and  not  dependent  upon  in- 
ferences. Robinson  v.  Thresher,  18  Gour.  21-21  (March, 
1906)  ;  Lotz  V.  Kenny,  19  Gour.  51-10  (July  13,  1907). 
The  making  of  drawings  on  a  specific  date  is  not  estab- 
lished by  witnesses  who  have  not  had  possession  of  the 
drawings  since  they  were  shown  to  them  and  who  are 
not  able  to  testify  that  they  are  in  the  same  condition  at 
the  time  their  testimony  is  given  as  they  were  at  the  time 
they  were  shown  to  them.    Miller  v.  Blackhurn,  172  0. 

61 


G.  549  (1911)  ;  Kirkegaard  &  Jebsen  v.  Ries,  125  0.  G. 
1700  (1906)  ;  Freeman  v.  Garrels  &  Kimball,  102  O.  G. 
1777. 

104.  Who  May  Be  CoiToborating  Witnesses.  An  as- 
signee may  testify  as  a  corroborating  witness,  though  his 
testimonj^  woukl  not  be  given  the  same  weight  as  it  would 
if  he  were  disinterested.  Turnhull  v.  Curtis,  120  0.  G. 
2442  (1905).  The  wife  of  the  inventor.  Barter  v.  Bar- 
rett, 114  0.  G.  975.  One  joint  inventor  can  not  cor- 
roborate another  joint  inventor.  Freeman  v.  Garrels  & 
Kimhall,  102  0.  G.  1777  (1903). 

105.  Importance  of  Date  of  Conception  in  Interference 
Cases.  In  an  interference  case,  the  date  of  conception 
and  disclosure  becomes  important  on  the  question  of 
priority,  to  the  party  who  was  last  to  file  his  application 
or  last  to  reduce  to  practice,  so  when  he  is  the  first  to 
conceive  but  the  last  to  reduce  to  practice,  he  is  entitled 
to  an  award  of  priority  where  he  has  followed  up  his  con- 
ception and  disclosure  by  due  diligence,  more  particular- 
ly diligence  in  reducing  his  invention  to  actual  practice 
than  in  filing  his  application  for  a  patent  or  manufactur- 
ing his  device  for  public  use.  Oliver  v.  Felhel,  20  App. 
D.  C.  255,  100  0.  G.  2384;  1902  C.  D.  565;  Cooke  v. 
Jones  &  Taylor,  116  0.  G.  1181  (1904). 

106.  Diligence.  Many  interference  cases  turn  on  the 
question  as  to  which  of  the  parties  exercised  diligence  in 
following  up  his  invention  and  putting  it  into  practical, 
useful  form.  We  have  seen  that  invention  is  a  mental 
process,  in  the  first  instance,  and  that  so  long  as  it  re- 
mains in  the  mind  of  the  inventor,  undisclosed  to  any- 
one else,  it  serves  the  world  no  purpose  and  does  not 
advance  the  arts  or  sciences.  The  inventor  may  refuse 
to  disclose  his  discoveries.  The  object  of  the  public  in 
granting  a  patent  is  to  obtain  the  benefit  of  the  discovery 
and  therefore  inventors  are  encouraged  to  put  their  dis- 
coveries into  practical  useful  form.  Not  only  in  patents, 
but  in  many  other  affairs  of  life,  the  law  rewards  the 

62 


diligent.  An  inventor  may  conceive  an  invention  and 
make  drawings  of  it,  but  he  will  not  be  permitted  to  stop 
at  tliat  point  and  through  utter  carelessness  give  it  no 
more  consideration  for  a  long  period  of  time,  if  while  he 
is  sitting  idly  by,  another,  more  industrious,  makes  the 
same  discovery  that  he  has  made  and  proceeds  with  due 
dispatch  to  put  the  discovery  into  form  in  which  the 
public  can  obtain  the  benefit  thereof.  There  can  be  no 
good  reason  for  depriving  this  later,  diligent,  industrious 
inventor  of  a  reward  in  the  form  of  a  patent,  merely  to 
accommodate  the  doless,  idle  inventor  who  has  no  excuse 
for  holding  back  his  invention. 

There  are,  however,  many  circumstances  which  may 
contribute  to  prevent  an  inventor  from  putting  his  in- 
vention into  useful  form,  and  for  this  reason  we  hear  the 
apparently  delinquent  as  to  what  excuse  he  may  have  to 
offer  for  not  being  more  diligent  in  reducing  his  inven- 
tion to  actual  practice  or  what  excuse  he  may  have  for 
not  filing  his  application  for  a  patent  at  an  earlier  date. 
The  excuses  which  have  been  offered  cover  a  wide  range, 
and  some  have  been  found  to  be  reasonable  and  legitimate 
while  others  have  been  found  to  be  insufficient  as  against 
another  inventor  who  has  been  diligent  and  has  no  need 
to  offer  excuses.  Diligence  is  therefore  the  essence  of  the 
proper  relation  between  conception  and  reduction  to 
practice,  and  must  consist  of  the  degree  of  effort  that 
can  fairly  be  characterized  as  substantially  one  continu- 
ous act.  Tiventieth  Century  MacJmiery  Co.  v.  Loew  Mfg. 
Co.,  243  Fed.  373.  There  is  no  fixed  rule  of  diligence  ap- 
plicable to  all  cases  alike.  Whether  the  delay  shown 
shall  be  regarded  as  excusable  or  inexcusable,  must  nec- 
essarily depend  upon  the  special  circumstances  surround- 
ing the  actions  of  the  party  in  the  particular  case  where- 
in the  application  of  the  rule  may  be  sought.  Christen- 
scn  V.  Ellis,  94  0.  G.  2561 ;  1901  C.  D.  326,  17  App.  D. 
C.  498. 

Whoever  first  perfects  a  machine  is  entitled  to  the 

63 


patent  therefor  and  is  the  real  inventor,  although  others 
may  have  previously  had  the  idea  and  made  some  experi- 
ments toward  putting  it  in  practice,  subject,  however,  to 
this  qualification,  that  if  the  party  who  conceives  the  in- 
vention was  at  the  time  of  a  second  invention  by  another 
party  using  reasonable  diligence  in  perfecting  the  same, 
he  is  entitled  to  be  recognized  as  the  first  inventor,  al- 
though the  second  to  conceive  may  have  been  the  first  to 
reduce  to  practice,  either  actually  or  constructively.  In 
other  words,  the  inventor  who  starts  work  on  an  inven- 
tion is  required  to  keep  working  at  it  or  show  a  good  rea- 
son for  not  working  at  it  or  applying  for  a  patent.  Funk 
V.  Matteson  v.  Haines,  20  App.  D.  C.  285,  100  0.  G. 
1764;  1902  C.  D.  553;  Agaivam  Co.  v.  Jordan,  7  Wall. 
583. 

107.  To  What  Diligence  Relates.  Diligence  relates  to 
the  efforts  of  a  party  to  perfect  his  invention  mechan- 
ically and  not  to  efforts  to  exploit  the  invention  commer- 
cially, so  where  a  party  is  in  straightened  financial  con- 
dition, he  should  devote  his  attention  to  securing  means 
necessary  to  construct  his  machine,  or,  if  unable  to  do 
that,  to  securing  assistance  to  apply  for  a  patent.  See- 
herger  v.  Dodge,  113  0.  G.  1415 ;  Turnhull  v.  Curtis,  120 
0.  G.  2442  (1905). 

108.  Of  Whom  a  Showing"  of  Diligence  Is  Required. 
Diligence  is  required  of  the  first  to  conceive  but  last  to 
reduce  to  practice.  Under  our  patent  system,  he  who 
first  arrives  at  a  complete  conception  of  an  invention  is 
entitled  to  a  patent  therefor,  unless  the  interest  of  the 
public  is  compromised  by  his  lack  of  diligence  in  dem- 
onstrating that  his  invention  is  capable  of  useful  opera- 
tion. As  between  two  inventors  of  the  same  thing,  the 
one  who  first  reduces  the  discover}^  to  practical  operation 
is  deemed  prima  facie  the  true  inve*itor  without  regard 
to  the  date  of  his  conception,  but  the  earlier  inventor 
may  overcome  such  presumption  by  satisfactory  evidence 
that  he  used  due  diligence  to  perfect  and  utilize  the  in- 

64- 


vention,  and  actual  reduction  to  practice  is  preferable 
to  that  which  is  constructive  merely.  Laas,  et  al.,  v. 
Scott,  et  al.,  161  Fed.  122;  Eastern  Paper  Bag  Co.  v. 
Coniinental  Paper  Bag  Co.,  142  Fed.  479,  516;  Conti- 
nental Rubber  Works  v.  Single  Tube,  etc.,  Co.,  178  Fed. 
452 ;  Gaboivsky  v.  Gallaher,  191  0.  G.  835. 

109.  When  Not  Applicable.  A  showing  of  diligence  is 
not  required  of  the  inventor  who  was  the  first  to  reduce 
his  invention  to  practice.  Grabowsky  v.  Gallaher,  39 
App.  D.  C.  548,  191  0.  G.  835;  Paul  v.  Johnson,  23  App. 
i).  C.  187,  109  0.  G.  807 ;  Thompson  v.  Storrie,  245  0.  G. 
845,  46  App.  D.  C.  324;  Henderson  v.  Gilpin,  186  0.  G. 
289. 

110.  At  What  Time  Diligence  Is  Required.  One  who 
is  the  first  to  conceive  but  the  last  to  reduce  to  practice, 
must  show  due  diligence  from  a  time  just  previous  to  the 
entry  of  his  opponent  into  the  field.  Scott  v.  Laas  (& 
Spo7ienburg,  118  0.  G.  1367  (1905)  ;  Braun  v.  Wahl, 
45  App.  D.  C.  291,  228  0.  G.  1458;  Givens  v.  Warren, 
216  0.  G.  1013,  44  App.  D.  C.  10 ;  Christie  v.  Seybold, 
55  Fed.  69. 

111.  Comparative  Diligence.  Comparative  diligence 
of  the  parties  is  not  material.  Paul  v.  Johnson,  109  0.  G. 
807,  23  App.  D.  C.  187. 

112.  Work  On  Auxiliary  Inventions.  That  the  inven- 
tor was  engaged  in  work  on  an  auxiliary  invention  is  gen- 
erally no  excuse  except  where  it  is  necessary  to  have  the 
auxiliary  invention  perfected  in  order  to  use  the  inven- 
tion in  issue.  Stapleton  v.  Kinney,  18  App.  D.  C.  394, 
96  0.  G.  1432 ;  1901  C.  D.  414 ;  Lotterhand  v.  Hanson, 
23  App.  D.  C.  372, 110  0.  G.  861 ;  Luby  v.  Taylor,  118  0. 
G.  835  (1905)  ;  TuruhuU  v.  Curtis,  120  0.  G.  2442 
(1905). 

113.  Work  on  Other  Forms  of  the  Device.  That  the 
inventor  was  at  work  on  other  forms  of  the  device  is  or- 
dinarily no  valid  excuse  for  doing  nothing  on  the  form 
of  device  in  issue.     Clement  v.  Bichards,  etc.,  113  0.  G. 

y  65 


1143;  Briggs  v.  Lillie,  etc.,  116  0.  G.  871  (1904)  ;  Jones 
V.  Wolff,  17  Gour.  53-8  (July,  1905). 

114.  Work  on  Other  Inventions.  That  the  inventor 
was  engaged  in  perfecting  other  inventions  is  no  valid 
excuse  for  laying  aside  the  invention  in  issue.  Rohin- 
son  V.  Copeland,  111  0.  G.  579;  Liherman  v.  Williams, 
23  App.  D.  C.  223,  109  0.  G.  1610 ;  Tmjlor  v.  Westing- 
Jiouse,  119  0.  G.  1257  (1905)  ;  Kilhourn  v.  Hiner,  124 
0.  G.  1841  (1906)  ;  Tower  v.  Yost,  19  Gour.  66-3  (Jul}^ 
1907). 

115.  Business  Convenience.  While  the  inventor  is  not 
required  to  devote  his  entire  time  to  the  reduction  of  his 
invention  to  practice  under  circumstances  which  would 
ordinarily'  deprive  him  of  the  means  whereby  he  ob- 
tains a  livelihood,  still  he  will  not  be  permitted  to  offer 
as  a  valid  excuse  that  because  of  a  certain  contract  he 
had  entered  into  he  was  prevented  from  perfecting  his 
invention,  or  applying  for  a  patent,  or  that  his  personal 
business  commanded  his  time  in  another  direction,  or 
that  he  delayed  action  for  the  purpose  of  interesting 
some  person  of  large  capital  for  exploitation  of  the  in- 
vention. Watso7i  V.  TJiomas,  106  0.  G.  1776  (1903)  ; 
Miehle  v.  Read,  18  App.  D.  C.  128,  96  0.  G.  426 ;  1901 
C.  D.  396;  Clement  v.  Richards,  etc.,  113  0.  G.  1143; 
RoUnson  v.  Copcland,  24  App.  D.  C.  68,  112  0.  G.  501 ; 
Taylor  v.  Westinghouse,  119  0.  G.  1257  (1905)  ;  See- 
herger  v.  Dodge,  114  0.  G.  2382,  24  App.  D.  C.  476-485 ; 
Wyman  v.  Donnelly,  21  App.  D.  C.  81,  87 ;  Wilson  & 
Willard  Mfg.  Co.  v.  Bole,  et  al.,  227  Fed.  607,  610. 

116.  Poverty.  Where  poverty  is  offered  as  an  excuse 
for  inactivity  the  claim  will  be  carefully  scrutinized,  in- 
cluding the  credit  of  the  applicant,  his  expenditures  in 
other  directions,  his  earnings,  his  efforts  to  obtain  as- 
sistance from  others,  and  if  too  poor  to  construct  his 
machine  it  must  also  appear  that  he  was  too  poor  to 
apply  for  a  patent  at  an  earlier  date.  Usually  this  ex- 
cuse has  not  been  established.     Turnhull  v.  Curtis,  123 

66 


0.  G.  2312  (1906)  ;  Feinherg  v.  Cowan,  29  App.  D.  C. 
80,  125  0.  G.  667  (1906),  128  0.  G.  889;  Woods  v.  Poor, 
126  0.  G.  391  (1906)  r  I^onnelly  v.  Wymcm,  103  0.  G. 
657  (1903).  Where  poverty  is  the  alleged  excuse  for 
not  filing'  an  application,  it  must  be  shown  that  the  cir- 
cumstances were  of  a  compelling  nature  and  not  merely 
a  matter  of  business  convenience,  and  the  filing  of  other 
applications  in  the  meantime  would  rebut  any  such  claim. 
Paul  V.  Hess,  113  0.  G.  847,  115  0.  G.  251 ;  Turnhull  v. 
Curtis,  120  0.  G.  2442  (1905)  ;  3IcNeal  v.  Macey,  106  0. 
G.  2287  (1903)  ;  Gmons  v.  Peller,  124  0.  G.  624  (1906). 

117.  Commercial  Diligence  Is  of  No  Consequence. 
Where  the  inventor  spends  his  time  and  efforts  to  get 
investors  interested  in  exploiting  his  invention  commer- 
cially, or  in  trying  to  interest  a  corporation  in  adopting 
his  invention,  and  does  nothing  to  perfect  his  invention 
mechanically  and  test  its  efficiency,  he  is  not  diligent  in 
the  direction  which  the  law  requires,  Seeherger  v. 
Dodge,  113  0.  G.  1415,  24  App.  D.  C.  476,  114  0.  G. 
2382;  Gallagher  v.  Hein,  25  App.  D.  C.  77,  115  0.  G. 
1330  (1905)  ;  Turnhull  v.  Curtis,  120  0.  G.  2442  (1905)  ; 
Laas  &  Siwnenhurg  v.  Scott,  122  0.  G.  352  (1905). 

118.  Shifting  Responsibility  to  Guardian  or  Assignee. 
Since  responsibility  must  rest  upon  someone,  if  a  minor 
attributes  his  lack  of  diligence  to  his  guardian,  then  the 
guardian  must  explain  the  reasons  for  delay.  If  through 
the  intervention  of  the  guardian  the  minor  was  pre- 
vented from  perfecting  his  invention,  then  the  minor 
must  show  diligence  after  he  became  of  age.  Fuller  v. 
Jones,  115  0.  G.  1066;  Fuller  v.  Hewlett,  17  Gour.  3-6. 
Nor  can  responsibility  for  lack  of  diligence  be  shifted  to 
an  assignee.    O'Connel  v.  Schmidt,  118  0.  G.  588  (1905). 

119.  Making  of  Drawings  and  Blue  Prints.  The  mak- 
ing of  drawings  and  blue  prints  is  no  evidence  of  dili- 
gence unless  it  is  followed  promptly  by  construction  and 
testing  of  the  device,  or  by  application  for  a  patent. 
Watson  V.  Thomas,  108  0.  G.  1590,  23  App.  D.  C.  65. 

67 


Large  Cost.  The  great  cost  of  building  and  testing  an 
invention  is  no  valid  excuse,  if  within  the  means  of  the 
inventor.    Sceherger  v.  Bodge,  113  0.  G.  1415. 

Infringement  Suit.  Where  a  party  relies  upon  the 
existence  of  an  infringement  suit  as  the  cause  of  his 
delay,  he  must  show  what  there  was  in  that  infringe- 
ment suit  to  prevent  his  reducing  to  practice  the  inven- 
tion in  issue.  Hammond  v.  Basch,  115  0.  G.  804,  24  App. 
D.  C.  469.  Belief  that  a  prior  patent  covered  the  issue 
is  no  excuse.  Seebergcr  v.  Dodge,  114  0.  G.  2382,  24 
App.  D.  C.  476. 

Sickness.  Where  one  gives  the  excuse  of  sickness  for 
his  inactivity,  he  must  show  that  he  was  diligent  up  to 
the  time  of  his  illness  and  subsequent  thereto.  Paul  v. 
Johnson,  106  0.  G.  2013  (1903). 

120.  Time  for  Experimenting.  Long  delay  in  produc- 
ing an  invention  will  not  be  tolerated,  especially  where  it 
is  shown  that  the  inventor  had,  or  could  readily  have  ob- 
tained facilities  for  speedy  construction  of  his  invention. 
Coiirson  v.  O'Connor,  38  App.  D.  C.  484,  181  0.  G.  544; 
Slick  V.  Hansen,  39  App.  D.  C.  131,  181  0.  G.  1076; 
Bradley  v.  Miggett,  179  0.  G.  1108  (1911). 

121.  Reasonable  Diligence — What  Is.  Reasonable  dil- 
igence, like  "reasonable  doubt"  is  not  capable  of  any 
exact  definition.  What  is  a  reasonable  time  in  one  case, 
may  under  other  circumstances  be  unreasonable.  The 
court  will  grant  great  latitude  when  the  inventor  is  de- 
layed by  reason  of  circumstances  over  which  he  has  no 
control;  but  where  the  delay  is  caused  by  the  negli- 
gence of  the  inventor,  or  for  a  manifest  ulterior  purpose, 
no  leniency  whatever  should  be  extended.  Nelson  v. 
Faueette,  143  0.  G.  1348,  33  App.  D.  C.  217. 

Reasonable  Diligence  Shown.  For  particular  cases 
where  the  parties  have  been  held  to  have  exercised  rea- 
sonable diligence  under  the  circumstances  shown,  see 
Rowe  V.  Brinkm^,n,  172  0.  G.  1090 ;  Cragg  v.  StricUand, 
250  0.  G.  255 ;   Saner  v.  GroeUi,  239  0.  G.  653 ;   Oakes 

68 


V.  Young,  152  0.  G.  1225;  Davis  v.  Ilorton,  13G  0.  G. 
1768;  Woods  v.  Poor,  130  0.  G.  1313;  Dunhar  v.  Schel- 
lenhergcr,  125  0.  G.  348  (1906)  ;  Davis  v.  Garrett,  123 
0.  G.  1991  (1906)  ;  Christcnscn  v.  Ellis,  94  0.  G,  2561. 
1901  C.  D.  326;  Roe  v.  Hanson,  99  0.  G.  2550;  1902  C. 
D.  546;  Jones  d-  Taijlor  v.  ('ookr,!^  0.  G.  1493  (1905). 

122.  Diligence  in  Filing  Application  for  Patent.  After 
reduction  to  practice  of  the  invention,  a  mere  delay  of 
the  inventor  in  applying  for  a  patent,  in  the  absence  of 
concealment  (see  Title  Concealment),  abandonment  (see 
Title  Abandonment),  or  suppression,  will  not  prevent  an 
inventor  from  obtaining  a  patent  based  on  priority  of 
invention.  Rose  v.  Clifford,  etc.,  135  0.  G.  1361  (1908)  ; 
Huh'bard  v.  Berg,  195  0.  G.  818.  So  he  is  allowed  a  rea- 
sonable time  to  perfect  his  invention  before  applying  for 
a  patent.  Mead  v.  Davis  &  Varney,  31  App.  D.  C.  590, 
136  0.  G.  2001  (1908).,  Even  a  delay  of  six  years  was 
permitted,  where,  notwithstanding  the  long  delay,  he  was 
the  first  to  file  his  application.  Kellogg,  etc.,  Co.  v.  In- 
ternational Telephone  Mfg.  Co.,  et  al.,  158  Fed.  104-108, 
171  Fed.  651,  656.  A  delay  of  four  years  in  filing  an  ap- 
plication, in  the  absence  of  evidence  showing  actual 
abandonment  of  the  invention,  was  held  not  to  estop  the 
applicant  on  the  ground  of  concealment  stated  in  {Mason 
V.  Heplurn,  13  App.  D.  C.  86,  84  0.  G.  147).  Rolfe  v. 
Kaisling  v.  Leeper,  143  0.  G.  562;  Walker  v.  Lederer, 
179  0.  G.  851. 

123.  Intervening  Rights.  Inventors  striving,  in 
good  faith,  and  with  due  diligence  to  perfect  their  in- 
ventions, instead  of  engaging  in  a  race  of  diligence  to 
reach  the  Patent  Office  with  crude  and  probably  inop- 
erative devices,  should  be  commended  for  their  delay 
rather  than  be  charged  with  laches ;  but  there  is  some- 
times a  tendency  to  hold  back  applications  for  patents  in 
order  to  circumvent  rival  claimants  and  to  prolong  the 
life  of  the  monopolies  granted,  which  tendency  should  be 
rebuked  w:henever  it  is  possible  to  do  so.  Fefel  v.  Stock- 
ed 


ct\  17  App.  D.  C.  317,  94  0.  G.  433;  1901  C.  D.  269; 
McXeal  v.  Macey,  106  0.  G.  2287  (1903).  Where  during 
a  delay  of  six  rears  a  rival  had  entered  the  field,  widely 
advertised  the  device  and  sold  several  thousand  of  them, 
it  was  held  that  the  first  to  reduce  to  practice  but  who 
had  secreted  his  invention,  never  made  public  use  of  it  or 
otherwise  gave  it  to  the  public,  had  lost  his  rights.  Davis, 
etc.,  V.  Xational  Steam  Specmlty  Co.,  164  Fed.  191. 
One  who  conceives  a  broad  invention  but  fails  to  claim 
it  broadly,  leaves  the  field  open  to  specific  inventions 
other  than  his  own.  He  can  not  control  all  specific  in- 
ventions by  procuring  a  broad  patent  on  the  broad  inven- 
tion, the  claim  to  which  he  did  not  advance  prior  to  the 
making  of  a  specific  invention  by  a  later  inventor.  Wood 
V.  Beckman,  89  0.  G.  2459,  15  App.  D.  C.  4S4. 

124.  ITiiexplained  Delay  in  Filing  Application.  Long 
delay,  unexplained,  creates  a  presumption  that  what 
was  done  amounted  merely  to  an  abandoned  experiment 
(See  Abandoned  Experiment).  Smith  v.  Brooks,  24 
App.  D.  C.  75,  112  0.  G.  953 :  Sendelhach  v.  Gillette,  22 
App.  D.  C.  168,  109  0.  G.  276;  Warner  v.  Smith,  13 
App.  D.  C.  Ill,  94  0.  G.  311 ;  McDonald  v.  Edison,  105 
0.  G.  973  (1903)  ;  Winter  v.  Slick,  etc.,  107  0.  G.  1659 
(1903);  Oliver  v.  Felhel,  100  0.  G.  2384;  1902  C.  D. 
565,  20  App.  D.  C.  255. 

125.  Diligence  of  Attorney  in  Filing  Application. 
"Where  the  attorney  was  given  the  invention  in  February 
to  prepare  an  application,  the  Patent  Office  drawings 
wore  made  in  July  and  the  specifications  were  prepared 
in  October,  it  was  held  that  the  party  was  not  diligent, 
and  that  a  showing  that  his  attorney  was  sick  for  six 
weeks  during  that  time,  was  not  a  .sufficient  excuse. 
Bri(j(js  V.  Lillie,  etc.,  116  0.  G.  871  (1904).  A  delay  of 
three  months  by  an  attorney  in  filing  an  application  was 
lield  not  to  constitute  a  lack  of  diligence.  Poc  v.  Scharf, 
130  0.  G.  1309  (1907). 

126.  Diligence  in  Prosecuting  Application.     After  a 

70 


party  has  filed  his  application  his  rights  become  fixed 
and  he  can  not  be  charged  with  a  lack  of  diligence  be- 
cause of  delays  in  the  prosecution  of  his  application. 
Mehle  v.  Read,  18  App.  D.  C.  128,  96  0.  G.  426;  1901  C. 
D.  396;  McDujJee  v.  Hestonville,  etc.,  Co.,  181  Fed.  503- 
512 ;  Young  v.  Struble,  153  0.  G.  1223 ;  Shreeve  v.  Gris- 
micjer,202  0.  G.  951  (1914). 

127.  Documentary  Evidence — Letters.  Where  letters 
are  offered  in  evidence  accompanied  by  proof  that  they 
were  received  in  the  ordinary  course  of  business;  that 
the  recipient  was  familiar  with  the  signature  of  the  party 
who  purports  to  have  written  them ;  that  they  are  in 
his  handwriting  or  signed  by  him,  they  are  admissible. 
Royce  v.  Kempshall,  125  0.  G.  1347  (1906).  Where  let- 
ters were  introduced  as  collateral  evidence  relating  to 
the  conduct  of  a  party,  and  it  was  shown  that  they  were 
received  in  the  due  course  of  business  and  acted  upon  by 
the  writer  and  the  person  to  whom  they  were  sent,  no 
other  proof  of  their  genuineness  was  necessary.  Jones 
&  Taylor  v.  Cooke,  25  App.  D.  C.  524,  117  0.  G.  1493 
(1905).  A  letter  properly  deposited  in  the  United  States 
mail  will  be  presumed  to  have  reached  its  destination  and 
to  have  been  received  by  the  addressee  in  due  course,  but 
such  i)resumption  may  be  rebutted  by  evidence.  Ab- 
bott's Proof  of  Facts,  page  664.  This  presumption  is 
overcome  by  testimony  of  the  addressee  that  he  never 
received  it.  Ault  v.  Interstate  Sav.  &  Loan  Ass'n,  15 
Wash.  627,  47  Pac.  13.  Letters  from  an  agent  are  ad- 
missible if  the  agency  is  established.  Beaver  v.  Taylor, 
1  Wall.  637,  17  Law  Ed.  601.  Where  a  party  testified 
that  letters  offered  in  evidence  were  received  by  him 
through  the  mail  in  answer  to  letters  written  by  him- 
self, they  will  be  presumed  in  the  absence  of  any  show- 
ing to  the  contrary,  to  be  the  letters  of  the  party  whose 
name  is  signed  to  them.  Briggs  v.  Lillie,  etc.,  116  0.  G. 
871  (1904)  ;  Abbott's  Proof  of  Facts,  page  660.  If  one 
party  offers  part  of  a   connected   correspondence,  the 

71 


other  party  may  offer  the  remainder  thereof.     Abbott's 
Proof  of  Facts,  page  557. 

Copies  of  Letters.  Where  the  original  letters  are  in 
possession  of  an  adverse  party  and  it  is  desired  to  intro- 
duce them  in  evidence,  notice  should  be  served  on  the 
adverse  party  or  his  attorney  to  produce  them  at  a  cer- 
tain time  and  place,  or  on  failure  to  do  so,  letter  press 
or  other  copies  thereof  will  be  offered,  but  in  such  case 
proof  should  be  offered  that  the  copies  are  correct  copies 
of  the  original.  Boyce  v.  Kempshall,  125  0.  Q.  1347, 
The  writer's  execution  of  the  letter  must  be  shown  be- 
fore it  is  admissible  in  evidence,  unless  it  is  shown  to 
have  been  mailed  at  the  writer's  place  of  residence  and 
to  be  in  answer  to  a  letter  previously  written  to  him. 
Abbott's  Proof  of  Facts,  page  659. 

128.  Refreshing  Memory  of  Witness.  Books,  mem- 
oranda, letters  or  documents  of  most  any  kind  may  be 
used  by  the  witness  to  refresh  his  memory  as  to  the  date 
of  the  happening  of  an  event,  but  such  means  of  refresh- 
ing the  memory  are  not  in  themselves  evidence  proper  to 
be  introduced  in  evidence  by  the  partj^  who  offers  the 
witness,  for  the  contents  of  such  instruments,  etc.,  may 
not  in  any  manner  bear  upon  the  issue  and  may  be 
wholly  foreign  to  the  issues;  but  on  cross-examination 
opposing  counsel  may  require  the  production  of  the 
memoranda  used  hy  the  witness,  in  order  that  he  may 
cross-examine  upon  the  same.  Abbott's  Proof  of  Facts, 
pages  403  and  487.  Laas  &  Sponenhurg  v.  Scott,  122  0. 
G.  352;  Lowrie  v.  Taylor  &  Taylor,  123  0.  G.  1665 
(1906),  27  App.  D.  C.  522. 

129.  Photographs — Secondary  Evidence.  In  most 
cases  photographs  are  secondary  evidence.  The  thing 
photographed  is  the  primary  evidence  unless  the  photo- 
graph itself  is  the  thing  in  dispute,  but  it  would  seem 
that  photographs  of  things  which  it  is  manifestly  im- 
possible to  produce  before  the  tribunal  should  be  re- 
ceived if  they  are  accompanied  b}-  proper  proof  that 

72 


they  are  correct  representations  of  such  things  or  are 
offered  as  a  part  of  the  oral  testimonj^  of  a  witness. 
Abbott's  Proof  of  Facts,  pages  792,  793. 

130.  Blue  Prints  arc  copies  of  some  original,  but  they 
may  be  introduced  as  a  part  of  the  testimony  of  a  wit- 
ness and  as  such  are  made  a  part  of  his  oral  testimony. 
Fcssenden  v.  Pierce,  21  Gour.  21-11  (Mar.,  1909). 

131.  Drawings.  One  relying  upon  drawings  to  fix 
the  time  of  conception  or  disclosure,  must  not  only  pro- 
duce the  drawings  but  he  must  also  establish  the  fact 
as  to  when  the  drawings  were  made  or  disclosed  to 
others,  and  the  inventor's  own  statements,  uncorrobor- 
ated, are  not  sufficient  to  show  when  the  drawings  were 
made  or  when  the  drawings  were  exhibited  to  another. 
Freeman  v.  Gartels  &  Kimhall,  102  0.  G.  1777  (1903). 

132.  Exhibits.  Exhibits  not  properly  marked,  though 
filed  in  the  Patent  Office,  need  not  be  considered.  How- 
ever the  party  was  permitted  to  offer  ex  parte  affidavits 
as  furnishing  a  foundation  for  proof  that  they  are  the 
identical  exhibits  offered  in  evidence  and  the  party  was 
permitted  to  take  proofs  to  establish  such  fact.  Hend- 
ler  V.  Graf,  96  0.  G.  2063 ;   1901  C.  D.  130. 

Exhibits,  except  by  consent  of  the  parties  to  the  cause, 
can  not  be  taken  from  the  Patent  Office.  They  will, 
however,  be  sent  in  charge  of  an  employee  of  the  office. 
Seller  v.  Goldberg,  116  0.  G.  595. 

Identification  of  Exhibits.  Where  the  witnesses  iden- 
tify an  exhibit  b}^  its  general  appearance  and  have  no 
knowledge  of  the  invention  embodied  in  it  and  it  ap- 
pears that  the  invention  in  controversy  is  a  feature  of 
construction  almost  hidden  from  view  and  having  no  ef- 
fect upon  the  general  appearance,  such  testimony  does 
not  prove  the  existence  of  the  invention  in  controversy 
at  the  date  stated.  Harris  v.  Stern  &  Lotz,  105  0.  G.  259 
(1903). 

The  claim  has  often  been  made  that  exhibits  were 
changed  after  being  introduced  in  evidence,  or  after  fil- 

73 


iug.    To  avoid  such  controversies,  the  exhibit  should  be 
carefully  described  at  the  time  of  its  introduction. 

133.  Reduction  to  Practice — Actual.  To  constitute 
actual  reduction  to  practice  it  is  necessary  (except  in 
certain  cases  where  actual  test  is  manifestly  unneces- 
sary) to  do  more  than  make  the  device  or  machine.  It 
must  be  shown  that  the  machine  was  capable  of  perform- 
ing the  work  for  which  it  was  designed,  at  least  to  a 
small  degree  of  efficiency.  Macdonald  v.  Edison,  105  0. 
G.  973  (1903).  Sale  Commercially.  So  where  the  evi- 
dence showed  that  the  machine  had  been  built,  practical- 
ly tested  and  sold  commercially  as  an  operative  machine, 
the  facts  were  held  to  establish  beyond  a  reasonable 
doubt  a  reduction  to  practice.  Otis  Elevator  Co.,  et  al., 
V.  Interhorough,  etc.,  Co.,  222  Fed.  501.  The  machine 
must  embody  the  elements  of  the  issue,  be  put  to  practical 
use  and  operated  successfully  to  perform  the  particular 
work  for  which  it  was  intended.  The  fact  that  the  in- 
ventor afterwards  constructed  one  or  more  other  ma- 
chines with  a  view  to  greater  mechanical  perfection,  or 
where  the  inventor  constructs  a  cheaper  or  lighter  ma- 
chine, or  changes  certain  details  to  perfect  it  for  the 
trade,  such  subsequent  constructions  do  not  alter  the  fact 
that  the  former  construction  was  a  reduction  to  prac- 
tice. TJiomas  v.  Trissel,  107  0.  G.  265  (1903)  ;  Trissel  v. 
Thomas,  109  0.  G.  809,  23  App.  D.  C.  219;  Hein  v.  Bu- 
koup,  81  0.  G.  2088;  Blacl-ford  v.  Wilder,  104  0.  G.  578 
(1903),21  App.  D.  C.  1. 

Mere  progress  to  an  end  is  not  sufficient,  however  near 
that  progress  may  have  been  to  the  end  in  %dew.  The 
law  requires  certainty  and  the  inventor  must  show  that 
his  machine  was  actually  capable  of  performing  the  work 
for  which  it  was  intended.  Funk  v.  Matteson  v.  Haines, 
20  App.  D.  C.  285,  100  0.  G.  1764;  1902  C.  D.  553; 
Macdonald  v.  Edison,  21  App.  D.  C.  527,  105  0.  G.  1263 
(1903). 

The   Mechanism    Claimed    Must   Operate    Successfully. 

74 


Though  it  is  not  necessary  that  the  machine  be  perfect 
or  that  all  parts  of  the  macliine  in  which  it  is  used  shall 
be  mechanically  perfect,  still,  as  to  that  part  of  the  ma- 
chine which  is  in  issue,  there  must  be  successful  opera- 
tion. A  failure  can  not  be  excused  by  making  the  claim 
that  a  skilled  mechanic  could  have  made  it  operate  suc- 
cessfully. Siveihart  v.  Mauldin,  99  0.  G.  665 ;  1902  C. 
D.  137.     (See  Tests.) 

134.  Imperfections.  To  constitute  a  reduction  to 
practice  it  is  not  necessary  that  a  machine  be  perfect,  but 
it  must  appear  that  a  structure  embodying  all  the  essen- 
tial elements  of  the  invention  did  accomplish  the  result 
for  which  it  was  intended,  in  a  reasonably  practical  way. 
A  machine  may  be  even  crude  and  not  made  with  mate- 
rials which  would  ordinarily  and  naturally  be  used  by  a 
manufacturer  and  still  be  a  reduction  to  practice,  if  in 
such  form  it  is  practically  operative  and  performs 
the  function  for  which  it  is  intended.  Cunimings  v. 
McKenzie,  110  0.  G.  1167 ;  American  Co.  v.  Tool  Co., 
4  Fisher  299 ;  Halwood  v.  Lalor  v.  Bockhoff,  21  App.  D. 
C.  61,  103  0.  G.  887  (1903)  ;  Spaulding  v.  Norden,  24 
App.  D.  C.  286,  112  0.  G.  2091,  114  0.  G.  1828;  Smith 
V.  Brooks,  24  App.  D.  C.  75,  112  0.  G.  953 ;  Hope,  Jr., 
V.  Voight,  25  App.  D.  C.  22,  115  0.  G.  1585  (1905)  ; 
Loivrie  v.  Taylor  &  Taylor,  27  App.  D.  C.  522,  123  0.  G. 
1665  (1906)  ;  Burson  v.  Yogel,  29  App.  D.  C.  388,  131 
0.  G.  942  (1907). 

135.  Crude  Structure.  Where  a  structure  was  so  crude 
as  to  make  it  necessary  to  make  further  experiments  be- 
fore undertaking  to  build  machines  in  accordance  with 
the  exhibit  and  it  appears  that  it  is  essentially  an  ex- 
perimental device,  it  is  not  a  reduction  to  practice. 
Ocumpaugh  v.  Norton,  25  App.  D.  C.  90,  115  0.  G.  1850; 
Lmdemeyer  v.  Hoffman,  et  al.,  18  App.  D.  C.  1,  95  0.  G. 
838  (1901). 

136.  Reduction  to  Practice  in  a  Foreign  Country.  The 
construction  of  a  successful  device  in  a  foreign  country 

75 


is  not  a  reduction  to  practice  in  this  country,  even  when 
the  inventor  conceives  the  invention  here  and  goes  abroad 
to  install  the  apparatus.  Lorimer  v.  Erickson,  227  0.  G. 
1445,  44  App.  D.  C.  503 ;  Bell  v.  Brooks,  1881  C.  D.  8 ; 
Tucker  v.  Davis,  2  0.  G.  224;  DeKando  v.  Armstrong, 
169  0.  G.  1185,  37  App.  D.  C.  314;  Bradley  v.  MUjgett, 
179  0.  G.  1108  (1911). 

137.  Reduction  to  Practice  by  An  Assignee.  Where 
an  invention  has  been  assigned,  the  assignee  may  reduce 
it  to  practice  and  such  reduction  innures  to  the  benefit  of 
such  assignee,  whether  the  inventor  contributes  to  the 
reduction  or  not,  and  even  though  the  machine  con- 
structed may  embody  features  patentably  different  from 
the  original.  Thomas  v.  Steivart  202  0.  G.  1259  (1913), 
42  App.  D.  C.  222. 

138.  Agent  Reducing  to  Practice.  A  reduction  to 
practice  by  an  agent  innures  to  the  benefit  of  the  prin- 
cipal, but  it  is  not  enough  to  entitle  an  applicant  to  a 
patent  that  someone  else,  not  his  agent,  has  shown  the 
practicability  of  the  invention  by  reducing  it  to  practice. 
Himter  v.  Stikeman,  13  App.  D.  C.  214,  226;  Kohinson 
V.  McCormick,  128  0.  G.  3289,  29  App.  D.  C.  98,  111; 
Shuman  v.  Beall,  123  0.  G.  1664;  Howell  v.  Hess,  30 
App.  D.  C.  194,  132  0.  G.  1074  (1907)  ;  Hathaiuay  v. 
Field,  261  0.  G.  413  (1919).  Where  an  invention  is  re- 
duced to  practice  by  one  not  authorized  to  do  so,  such 
reduction  to  practice  does  not  innure  to  the  benefit  of 
the  inventor.    Howell  v.  Hess,  122  0.  G.  2393  (1906). 

139.  Model.  While  a  model,  in  the  strict  meaning  of 
that  term,  is  not  a  reduction  to  practice,  nevertheless, 
where  a  device  was  called  a  model  but  was  actually  used 
for  the  purpose  intended  and  completely  demonstrated 
its  practicability,  even  though  but  half  size  of  a  commer- 
cial machine,  it  was  held  to  be  a  reduction  to  practice. 
Gallagher  v.  Hein,  25  App.  D.  C.  77,  115  0.  G.  1330 
(1905)  ;  Hammond  v.  Basch,  115  0.  G.  804,  24  App.  D. 
C.  469;   Hape,  Jr.,  v.  Voight,  25  App.  D.  C.  22;   115  0- 

76 


G.  1585;   Rohinsoii  v.  Thresher,  12.3  0.  G.  2975,  28  App. 
D.  C.  22. 

140.  Machine  Incomplete  at  the  Time  of  Taking  Testi- 
mony. Though  a  machine  may  not  be  complete  at  the 
time  of  taking  testimony,  if  it  is  clearly  established  that 
the  missing  parts  were  present  at  the  time  it  was  oper- 
ated, and  where  it  also  appears  that  the  test  showed  suc- 
cessful operation,  it  would  be  a  reduction  to  practice. 
Baseh  v.  Hammond,  113  0.  G.  551;  Brooks  v.  Seelinger, 
116  0.  G.  1735  (1905)  ;  Wyman  v.  Donnelly,  104  0.  G. 
310  (1903),  21  App.  D.  C.  81.  And  where  the  device 
only  required  the  addition  of  a  mechanical  detail  which 
any  mechanic  skilled  in  the  art  would  have  supplied  and 
such  detail  itself  is  old  in  the  art,  it  was  held  a  reduction 
to  practice.  Howard  v.  Bowes,  137  0.  G.  733  (1908),  31 
App.  D.  C.  619. 

TESTS. 

141.  Tests  Are  Required  as  a  General  Rule.  As  a  gen- 
eral rule  a  machine  must  be  tested  to  demonstrate  its 
fitness  to  accomplish  the  result  for  which  it  was  designed. 
Macdonald  v.  Edison,  105  0.  G.  1263  (1903),  21  App. 
D.  C.  527 ;  Paul  v.  Hess,  115  0.  G.  251 ;  Gallagher  v. 
Hein,  115  0.  G.  1330;  O'Connell  v.  Schmidt,  122  0.  G. 
2065  (1906)  ;  Wickers  &  Furlong  v.  McKee,  129  0.  G. 
869  (1907)  ;  Pool  V.  Dunn,  151  0.  G.  450.  The  condition 
of  the  prior  art  must  be  considered  in  determining  neces- 
sity of  test.  Sachs  v.  Haskins,  21  Gour.  17-1  (Mar., 
1909). 

When  Tests  Are  N'ot  Necessary.  When  a  device  is  so 
simple  that  it  is  apparent  upon  inspection  that  it  will 
perform  the  intended  function,  no  test  is  necessary  to 
establish  a  reduction  to  practice.  Meison  v.  Hephurn,  13 
App.  D.  C.  86,  84  0.  G.  147 ;  1898  C.  D.  510 ;  Linde- 
meyer  v.  Hoffman,  et  al.,  18  App.  D.  C.  1,  95  0.  G.  838 ; 
1901  C.  D.  353 ;  Loomis  v.  Hauser,  19  App.  D.  C.  401,  99 
0.  G.  1172;  1902  C.  D.  530;  Landa  v.  Kavle,  158  0.  G. 
228  (1910)  ;   Gaisman  v.  Gillette,  165  0.  G.  244;   Cham- 

77 


hers  d'  King  v.  Frost,  170  0.  G.  244,  246,  37  App.  D.  C. 
332. 

Particular  Devices,  Tests  of  Which  Were  Held  Neces- 
sary: 

T^'pe-bars  for  typewriters.  Paul  v.  Hess,  115  0.  G. 
251. 

Graduated  printing  plate.  Wickers  <&  Furlong  v.  Mc- 
Kee,  129  0.  G.  869. 

Mechanism  to  be  put  in  a  telephone  circuit.  O'Connell 
V.  Schmidt,  122  0.  G.  2065. 

Bottle  cap  so  crude  as  not  to  be  capable  of  actual  use. 
Lindemeyer  v.  Hojfman,  95  0.  G.  838. 

A  cloth  cased  horse-collar  stuffed  with  cotton.  Couch 
V.  Barnett,  110  0.  G.  1431. 

Ticket  holder  for  theater  tickets.  Loom.is  v.  Hauser, 
99  0.  G.  1172. 

Electrical  circuit  protector.  Bolfe  v.  Hojfman,  121  0. 
G.  1350. 

Roller  bearing.    Winter  v.  Slick,  etc.,  107  0.  G.  1659. 

Typewriting  machine.    Paul  v.  Hess,  113  0.  G.  847. 

Garment  hook,  Loivrie  v.  Taylor  &  Taylor,  118  0.  G. 
1681. 

Cover-strip  for  the  ends  of  the  blades  of  a  turbine 
wheel.    Emmett  v.  Fullagar,  124  0.  G.  2178. 

Inverted  gas-mantle.  Daggett,  Jr.,  v.  Kaufman,  145 
O.  G.  1024.  ' 

Fuse  for  electric  lighting  circuit.  Sachs  v.  Haskins, 
21  Gour.  17-2  (March,  1909). 

Casing  for  transmission  gearing.  Hujf  v.  Gulick,  177 
0.  G.  525. 

Sound  boxes  for  phonograpli.  Rinehart  v.  Gihson,  185 
0.  G.  527. 

Printing  press.  Miclile  v.  Scott  &  Scott,  190  0.  G. 
1030. 

Rail-anchor.  Laas,  ct  al.,  v.  Scott,  et  al.,  161  Fed.  122, 
126. 

78 


Linked  bracelet.  TIadley  v.  Ellis,  265  0.  G.  458  (1919), 
258  Fed.  984. 

142.  Kind  of  Test  Required.  The  kind  of  test  that  is 
required  is  a  test  which  will  show  that  the  machine  as 
constructed  did  perform  the  work  which  it  was  intended 
to  perform,  and  though  it  is  safer  practice  to  show  a 
test  under  actual  service  conditions  such  showing  may 
not  be  necessary  if  its  practicability  can  be  established 
by  a  test  elsewhere.  Eoe  v.  Hanson,  99  0.  G.  2550; 
1902  C.  D.  546;  Rolfe  v.  Hoffman,  121  0.  G.  1350 
(1905)   Ehersole  v.  Durkin,  132  0.  G.  842  (1907). 

A  shop  test  ma}^  in  some  cases  be  sufficient.  Wyman 
V.  Donnelly,  21  App.  D.  C.  81,  104  0.  G.  310.  But  it 
was  held  that  a  shop  test  of  a  rail  anchor  was  not  suffi- 
cient. Laas,  et  al.  v.  Scott,  et  al.,  161  Fed.  122, 127.  Nor 
was  a  test  of  a  garment  stay  not  under  actual  service 
conditions.  Barclcy  v.  Schuler,  41  App.  D.  C.  250,  199 
0.  G.  309.  Nor  was  a  test  of  a  tire-holding  device  by 
merelj^  bouncing  upon  the  floor  a  wheel  having  the  de- 
vice and  a  tire  attached.  Johski,  etc.  v.  Johnson,  247  0. 
G.  479.  Nor  a  test  of  an  electric  lighting  system  for 
railway  cars  not  tested  on  railwaj^  cars.  Bliss  v.  Thomp- 
son, 20  Gour.  19-8  (March,  1908).  But  for  contrary 
view  see  decision  of  Court  of  xippeals,  D.  C.  Creveling 
V.  Jepson,  226  0.  G.  339,  44  App.  D.  C.  445.  -  Commercial 
practicability  not  necessary  if  it  be  shown  that  the  device 
accomplished  the  end  desired.  Laas,  et  al.  v.  Scott,  et  al., 
161  Fed.  122 ;  Roe  v.  Hanson,  19  App.  D.  C.  559,  99  0. 
G.  2550 ;  1902  C.  D.  546 ;  Emerson  v.  Sanderson,  174  0. 
G.  831  (1911). 

An  experimental  test  may  or  may  not  establish  a  reduc- 
tion to  practice,  depending  upon  the  nature  of  the  in- 
vention and  the  results  shown  by  the  test.  Mills  v. 
Torrance,  17  Gour.  67-6  (Oct.,  1905)  ;  Dashiell  v.  Tasker, 
21  App.  D.  C.  64,  103  0.  G.  2147  (1903),  102  0.  G.  1551. 

Mechanical  changes  ma}^  be  necessary  and  still  con- 
stitute a  reduction  to  practice.    It  is  only  necessary  that 

79 


the  device  reasonably  meet  the  requirements  of  the  spec- 
ification. Pool  V.  Dunn,  151  0.  G.  450,  34  App.  D.  C. 
132. 

143.  Parts  Broken.  The  mere  fact  that  some  part  was 
broken  during  the  test  does  not  necessarily  show  an  un- 
successful operation,  if  it  was  ordinary  breakage  which 
might  be  expected  of  similar  machines  under  .similar  con- 
ditions. Doulle  V.  Mills,  112  0.  G.  1747.  But  where,  as 
a  result  of  breaking  the  materials  had  to  be  changed,  as 
well  as  the  shape  of  the  device,  the  test  was  held  insuffi- 
cient. Gilman  tO  Brown  v.  Hinson,  118  0.  G.  1933 
(1905).  And  where  in  the  test  the  device  was  crushed  to 
fragments,  it  was  held  not  a  sufficient  test.  Gallagher  v. 
Heine,  114  0.  G.  974.  Where  the  device  was  embodied 
in  an  automobile  and  after  a  run  of  eighty  miles,  certain 
parts  were  broken,  even  though  the  injury  did  not  ap- 
pear to  be  to  the  novel  parts,  it  was  held  an  insufficient 
test.  Huff  V.  Gulick,  38  App.  D.  C.  334,  179  0.  G.  579. 
But  where  a  machine  had  been  used  for  sis  montlLs  and 
the  only  broken  part  was  a  rivet  supporting  one  of  the 
parts,  the  test  was  held  sufficient.  Foote  v.  Wenk,  118 
0.  G.  1366  (1905). 

144.  Must  Include  All  the  Elements  of  the  Issue.  The 
test  must  generally  include  all  the  elements  of  the  issue. 
Henderson  v.  Gilpin,  186  0.  G.  289  (1911),  39  App.  D. 

C.  428,  187  0.  G.  231 ;  Mielile  v.  Scott  &  Scott,  40  App. 

D.  C.  17,  190  0.  G.  1030 ;  Heft  v.  Swinnerton,  181  0.  G. 
542  (1911).  But  where  some  of  the  elements  were  old 
and  the  nature  of  the  invention  was  such  that  a  test  was 
hardly  necessarj-,  it  was  held  that  the  test  established  a 
.successful  reduction  to  practice  even  though  lacking 
some  elements  of  the  issue.  Steicart  v.  Thomas,  202  0. 
G.  1262,  42  App.  D.  C.  222. 

145.  When  Test  Must  Be  Made.  To  overcome  a  prior 
filing  date,  the  test  must  have  been  made  prior  to  the 
filing  date  of  the  opposing  party.  Miehle  v.  Scott  & 
Scott,  190  0.  G.  1030,  40  App.  D.  C.  17. 

80 


146.  Chemical  Compound  Test.  It  is  sufficient  to  show 
that  the  compound  had  some  apparent  usefulness.  Pot- 
ter V.  Tone,  163  0.  G.  729  (1911);  Silverman  v.  Ilen- 
(hklison,  99  0.  G.  445;   1902  C.  D.  12.3. 

147.  Process  Test.  A  process  may  be  shown  to  have 
been  successfully  reduced  to  practice  even  though  the 
product  was  defective,  due  to  defective  material  and  not 
to  the  fact  that  the  process  was  not  successfully  carried 
out.  Appert  v.  Brownsville  Plate  Glass  Co.,  144  Fed. 
11,5,  118. 

148.  Two  Forms  of  Machine — One  Test.  "Where  after 
making  a  successful  test  of  one  form  of  machine,  the  in- 
ventor made  an  improved  form  and  showed  the  second 
form  in  his  application,  making  broad  claims,  including 
the  first  form,  it  was  held  a  reduction  to  practice.  Wy- 
man  v.  Donnelly,  21  App.  D.  C.  81,  104  0.  G.  310  (1903). 
Affirming  Commissioner,  103  0.  G.  657. 

149.  Evidence  of  Success  of  Test.  In  proving  success- 
ful operation,  care  should  be  exercised  to  avoid  intro- 
ducing merely  the  conclusions  or  opinions  of  the  wit- 
nesses (unless  they  are  persons  skilled  in  the  art)  with- 
out stating  the  facts  upon  which  such  opinions  or  con- 
clusions are  based,  and  it  is  not  sufficient  for  the  wit- 
nesses to  state  that  a  machine  was  tested  and  found  sat- 
isfactor,y.  While  such  evidence  may  be  entitled  to  some 
weight,  it  is  plain  that  in  most  cases  such  evidence  would 
be  merely  the  opinion  or  conclusions  of  the  witnesses  ar- 
rived at  from  what  they  observed  during  the  test.  The 
tribunal  trying  the  case  is  the  ultimate  judge  of  whether 
the  tests  were  satisfactory,  and  therefore  such  tribunal 
is  entitled  to  know  what  was  done  at  such  tests  and  par- 
ticularly what  results  were  obtained.  Bohinson  v. 
Thresher,  123  0.  G.  2627,  28  App.  D.  C.  22,  123  0.  G. 
2976  (1906)  ;  Daggett  v.  Kaufmann,  33  App.  D.  C.  450, 
145  0.  G.  1024.  Where  the  invention  was  a  friction 
spring  and  the  evidence  showed  that  it  was  put  in  a  vice 
and  subjected  to  pressure,  but  there  were  no  facts  ap- 

8  81 


pearing  of  record  which  showed  what  the  pressure  was, 
nor  any  facts  stated  which  would  enable  the  court  to  de- 
termine whether  the  statement  of  the  inventor  that  the 
test  was  satisfactory^  was  justified,  it  was  held  insuffi- 
cient to  show  a  reduction  to  practice.  Gallagher,  Jr.  v. 
Hein,  25  App.  D.  C.  77,  115  0.  G.  1330  (1905)  ;  Emmet 
V.  Fullager,  124  0.  G.  2178  (1906). 

150.  Opinions  of  Witnesses  Skilled  in  the  Art.  The 
Court  of  Appeals,  D.  C,  in  the  case  of  Seeherger  v.  Rus- 
sell, 121  0.  G.  2328,  26  App.  D.  C.  344,  held  that  the 
opinions  of  witnesses  skilled  in  the  art  and  who  were 
shown  to  have  understood  the  invention  or  construction, 
that  the  device  operated  successfully,  was  sufficient  to 
show  reduction  to  practice  though  the  facts  upon  which 
such  conclusionjs  were  based  were  not  stated.  Horton 
V.  Zimmer,  32  App.  D.  C.  217,  137  0.  G.  2223  (1908)  ; 
Hopkins  v.  Peters  &  Dement,  199  0.  G.  1243,  41  App. 
D.  C.  302;  Ehersole  v.  Durkin,  132  0.  G.  842  (1907). 

151.  Description  of  Invention  Tested.  It  must  of 
course  clearly-  appear  that  the  invention  in  issue  is  what 
was  tested,  and  the  witnesses  who  testify  to  its  success- 
ful operation  must  be  shown  to  have  understood  the  in- 
vention. Schmidt  v.  Clark,  138  0.  G.  768,  32  App.  D. 
C.  290. 

152.  Tests  Made  at  Time  of  Trial.  Where  a  machine 
is  operated  at  the  time  of  trial  for  the  purpose  of  show- 
ing that  it  will  operate  successfully,  and  witnesses  are 
produced  who  testify  that  the  machine  is  in  the  same 
condition  as  when  it  was  first  operated,  and  that  the  last 
operation  is  the  same  as  the  first,  such  facts  would  estab- 
lish a  reduction  to  practice.  Gordon  v.  Wentivorth,  130 
0.  G.  2065  (1907)  ;  Putnam  v.  Wctmore  &  Niemann, 
181  0.  G.  269,  39  App.  D.  C.  138.  But  where  a  party 
has  failed  to  prove  successful  operation,  he  can  not  at 
the  final  hearing,  operate  an  exhibit  to  show  that  it  is 
in  operative  condition  and  would  have  so  operated  when 
first   constructed.     Taylor  v.    Gilman,   158    0.    G.   883 

82 


(1910)  ;  Fefel  v.  Stockcr,  91  0.  G.  433;   1901  C.  D.  269, 
17  App.  D.  C.  317. 

153.  Organized  Machine  Successful — Presumption  as  to 
Subsidiary  Parts.  If  an  organized  machine  was  success- 
fully operated,  it  will  be  presumed  that  its  subsidiary 
parts  also  operated  successfully.  United  Shoe  Machinery 
Co.  V.  Grcenman,  153  Fed.  283,  286. 

Adoption  for  Commercial  Use.  Where  an  invention  had 
been  tested  by  the  government  and  adopted  as  a  model 
for  the  production  of  others  like  it,  it  was  held  to  show 
a  reduction  to  practice.  Schneider  v.  Driggs,  162  0.  G. 
1000,  36  App.  D.  C.  116.  Commissioner's  decision,  162 
0.  G.  269. 

154.  Circumstances  Discrediting  Test.  Where  a  wit- 
ness after  having  used  a  tool,  recommended  the  adoption 
of  another  similar  tool,  it  was  held  that  such  conduct 
was  stronger  evidence  that  the  test  was  unsatisfactory 
than  his  testimony  that  it  was  satisfactory.  Double  v. 
Mills,  112  0.  G.  1747.  The  construction  of  another  de- 
vice to  obviate  defects  in  a  prior  device,  tends  to  show 
that  the  first  device  was  unsatisfactory.  Marconi  v. 
Shoemaker,  131  0.  G.  1939  (1907).  So  work  on  a  similar 
device  or  devices  tends  to  show  that  the  first  was  un- 
satisfactory. Johski,  etc.  v.  Johnson,  247  0.  G.  479,  47 
App.  D.  C.  230.  Where  a  machine  was  constructed  and 
tested  for  a  short  time  but  subsequently  dismantled  and 
parts  of  the  same  were  lost  and  the  machine  was  never 
again  used  or  other  similar  machines  made  for  several 
years,  a  presumption  arises  that  the  machine  was  unsat- 
isfactory. Gallagher  v.  Hien,  25  App.  D.  C.  77,  83 ; 
1905  C.  D.  624;  Seeherger  v.  Russell,  117  0.  G.  2086. 
But  on  the  facts  in  the  latter  case  the  Court  of  Appeals, 
D.  C,  arrived  at  a  different  conclusion.  26  App.  D.  C. 
344.  But  the  mere  fact  that  a  machine  was  used  but 
little  and  was  then  dismantled,  is  not  conclusive  that  it 
was  not  successfully  operated,  for  failure  to  use  the  ma- 
chine may  be  satisfactorily  explained.    Stanhon  v.  Howe, 

83 


etc.,  153  0.  G.  823,  34  App.  D.  C.  413 ;  United  Shoe  Ma- 
chinery Co.  V.  Greeneman,  153  Fed.  283,  286;  Funk,  et 
al.  V.  Whitehj,  117  0.  G.  280  (1905). 

Long  Delay  in  Puttinga  Machine  in  Actual  Use — Effect. 
Long  delay  in  putting  a  machine  in  actual  use  for  the 
purpo.ses  intended,  has  always  been  regarded  as  a  potent 
circumstance  in  determining  whether  the  test  was  suc- 
cessful or  only  an  abandoned  experiment.  Sydeman  & 
Meade  v.  Thoma,  141  0.  G.  866,  32  App.  D.  C.  362; 
Thomas  v.  Weston,  99  0.  G.  864;  1902  C.  D.  521;  Green- 
wood V.  Dover,  1904  C.  D.  66,  108  0.  G.  2143;  Quist  v. 
Ostrom,  106  0.  G.  1501. 

Weight  of  Evidence.  Ex  parte  tests  will  not  be  given 
as  much  weight  as  tests  made  in  the  presence  of  both 
parties.  Bethlehem  Steel  Co.  v.  Xiles,  etc.,  160  Fed.  880. 
Affirmed,  173  Fed.  1019. 

154a.  Patentability  of  the  Issue — Rule  130.  One  who 
desires  to  question  the  patentability  of  the  issue  to  his 
opponent,  should  first  make  a  motion  to  dissolve  under 
Eule  122,  upon  the  ground  that  the  claims  are  not  pat- 
entable to  his  opponent,  or  in  other  words,  that  his  op- 
ponent has  no  right  to  make  the  claims,  and  he  may  then 
argue  the  question  on  final  hearing.  Eule  130  is  intended 
to  pro^*ide  for  the  contingency  that  one  party  may  have 
the  right  to  make  the  claims  and  another  party  may  not 
have  the  right  to  make  them.  It  can  not  be  urged  under 
this  rule  that  none  of  the  parties,  including  the  moving 
party,  have  a  right  to  make  the  claims,  or  that  the  counts 
are  not  patentable,  generally,  over  the  prior  art.  But 
where  a  motion  to  dissolve  assails  the  right  of  one  of  the 
parties  for  any  reason  to  make  the  claims,  the  question 
of  priority  is  directly  involved,  since  one  who  can  not 
make  the  claims  would  not  in  any  event  be  entitled  to  an 
award  of  priority.  Elsom  v.  Bonner  d-  Golde,  246  0.  G. 
299,  46  App.  D.  C.  230.  Rule  130  only  gives  a  party  the 
right  to  argue  at  final  hearing  the  unpatentability  of  the 
clainLs  to  an  opponent,  and  then  only  when  it  is  material 

84 


to  the  right  of  such  joarty  to  a  patent,  and  other  questions 
arising"  on  motion  to  dissolve,  may  not  be  presented  on 
final  hearing,  nor  can  a  party  argue  the  patentability  of 
the  issue  over  the  prior  art.  Molyneux  v.  Onderdonk, 
191  0.  G.  292  (1918)  ;  Ilavemcyer  v.  Coryell,  186  0.  G. 
558  (1912)  ;  Weis  v.  Mack,  185  0.  G.  830  (1912)  ;  Smith 
&  Larsen  v.  Hill,  177  0.  G.  523  (1912).  The  right  of  a 
party  to  argue  at  final  hearing  the  right  of  his  opponent 
to  make  the  claims,  is  conditioned  upon  his  having  first 
moved  to  dissolve  upon  that  ground,  or  having  presented 
a  sufficient  reason  for  his  failure  to  do  so.  Weis  v.  Mack, 
185  0.  G.  830  (1912)  ;  Broadivell  v.  Long,  164  0.  G.  252, 
36  App.  D.  C.  418.  However,  the  office  maj^  consider  the 
question  upon  its  own  motion,  even  though  no  motion  to 
dissolve  has  been  made.  Smith  v.  Foley,  etc.,  136  0.  G. 
847  (1907).  A  cause  will  not  be  set  down  for  final  hear- 
ing under  Rule  130  except  upon  motion,  which  motion 
should  be  made  before,  but  may  be  made  after,  entry  of 
judgment  upon  the  record.  Nohle  v.  Levine,  180  0.  G. 
602  (1912).  Where  a  party  moves  to  amend  the  issue 
under  Rule  109,  and  his  opponent  opposes  the  motion 
upon  the  ground  that  the  moving  party  has  no  right  to 
make  the  claims,  such  opponent  may  urge  at  final  hearing 
under  Rule  130,  the  nonpatentability  of  the  claims  pre- 
sented by  such  amendment.  Leonard  v.  Pardee,  164  0. 
G.  249  (1911).  Since  the  operativeness  of  an  opponent's 
device  goes  to  his  right  to  make  the  claims,  this  question 
may  be  presented  on  final  hearing  under  Rule  130,  where 
the  question  has  previously  been  presented  on  motion  to 
dissolve.    Barher  v.  Wood,  127  0.  G.  1991  (1907). 

155.  Operation  of  Similar  Devices.  Proof  may  be  made 
that  another  device  of  substantially  the  same  construc- 
tion operated  successfully.  Laas,  et  al.  v.  Scott,  et  at., 
161  Fed.  126. 

156.  Abandoned  Experiment,  The  proofs  tending  to 
establish  a  reduction  to  practice  must  be  considered  as 
a  whole  with  all  the  surrounding  circumstances  of  the 

85 


case  and  the  action  of  tlie  inventor  with  respect  to  his 
invention,  whether  he  made  or  attempted  to  make  use 
of  it,  or  pursue  his  object  to  any  final  conclusion,  wheth- 
er he  made  any  attempt  to  apply  for  a  patent,  whether  he 
gave  up  his  original  structure  and  proceeded  to  work  on 
some  other  or  similar  device  for  similar  use,  after  testing 
the  original,  or  threw  the  original  on  the  scrap  heap, 
jDermitting  parts  thereof  to  be  lost,  or  delayed  giving  it 
any  further  consideration  until  he  learned  of  a  rival  in 
the  field.  It  would  therefore  be  quite  impossible  to  state 
any  general  rule  as  to  what  is  and  what  is  not  merely  an 
abandoned  experiment,  since  each  case  must  rest  upon 
the  particular  facts  and  circumstances  shown.  Ocum- 
paugh  V.  Norton,  25  App.  D.  C.  90,  115  0.  G.  1850 
(1905).  Where  an  inventor  does  not  use  his  machine, 
but  permits  it  to  slumber  and  does  not  apply  for  a  pat- 
ent, he  can  not  resort  to  such  invention  as  an  anticipation 
of  a  subsequent  patent  by  another.  Welshhach  Light  Co. 
V.  Colin,  181  Fed.  122,  125.  And  where  an  invention  is 
laid  aside  for  six  years  until  it  is  discovered  that  an- 
other has  entered  the  field  with  a  similar  device,  such  in- 
action would  strongly  tend  to  show  that  the  invention 
was  impractical,  or  if  operative,  had  been  abandoned. 
Curtain  Supply  Co.  v.  National  Loch  Washer  Co.,  178 
Fed.  95. 

Discarding  the  Invention  After  Test.  Where  one 
throws  aside  his  invention  after  test  and  does  nothing 
more  until  he  learns  of  others  making  a  similar  device, 
such  action  would  indicate  that  the  alleged  invention  was 
merely  an  experiment.  Laurrence  v.  Voight,  147  0.  G. 
235  (1909)  ;  Lemp  v.  Mudge,  114  0.  G.  763,  24  App.  D. 
C.  282;  Oilman  &  Brown  v.  Hinson,  201  0.  G.  1219 
(1^13)  ;   Whipple  v.  Sharp,  112  0.  G.  1749. 

Another  Device  Put  Upon  the  Market  After  Test.  The 
circumstance  that  another  device  was  put  upon  the  mar- 
ket by  the  inventor,  or  those  who  were  given  charge 
thereof,  after  test  of  the  invention  in  question,  would  in- 

86 


dieate  that  the  test  was  unsatisi'actory  and  the  invention 
merely  an  experiment.  Paul  v.  Hess,  24  App.  D.  C.  462, 
115  0.  G.  251  (1905)  ;  Quist  v.  Ostrom,  108  0.  G.  2147; 
inUiard  V.  Brooks,  111  0.  G.  302,  23  App.  D.  C.  526; 
Bliss  V.  McElroy,  122  0.  G.  2687  (1906)  ;  Gordon  v. 
Wentivorth,  31  App.  D.  C.  150,  135  0.  G.  1125  (1908)  ; 
Gillman  &  Broivn  v.  Hiiison,  122  0.  G.  731,  26  App.  D. 
C.  409.  Where  the  invention  is  laid  aside  for  a  long 
period  after  alleged  reduction  to  practice,  while  the  in- 
ventor works  on  other  inventions,  a  presumption  arises 
that  his  first  invention  was  merely  an  abandoned  ex- 
periment. Adams  v.  Murphy,  96  0.  G.  845 ;  1901  C.  D. 
401. 

Inaction  in  the  Face  of  Demand  for  the  Invention. 
Total  abandonment  of  effort  in  the  face  of  a  strong  de- 
mand for  the  invention  is  proof  positive  that  the  device 
amounted  only  to  an  abandoned  experiment.  Lemp  v. 
Miidge,  24  App.  D.  C.  282,  114  0.  G.  763 ;  Beichenhach 
V.  Kelley,  94  0.  G.  1185;  1901  C.  D.  282. 

Delay  as  Evidence  of  Abandoned  Experiment.  A  long 
delay  after  alleged  reduction  to  practice,  during  which 
time  the  inventor  develops  other  inventions,  is  convinc- 
ing evidence  that  the  alleged  reduction  to  practice  was 
merely  an  abandoned  experiment.  Moore  v.  Hewitt,  31 
App.  D.  C.  577,  136  6.  G.  1535  (1908).  A  delay  of  four 
years  in  applying  for  a  patent  is  strong  evidence  that 
the  device  was  not  successful.  Fefel  v.  Stocker,  94  0.  G. 
433 ;  1901  C.  D.  269 ;  Quist  v.  Ostrom,  108  0.  G.  2147, 
23  App.  D.  C.  69. 

Refusal  to  Adopt  After  Test.  Where  those  who  were 
relied  upon  to  market  tlie  device  abandoned  the  enter- 
prise after  test  and  refuse  further  assistance  thereafter 
and  nothing  further  was  done  by  the  inventor  for  several 
years,  the  invention  was  held  to  be  an  abandoned  experi- 
ment.   Polile  V.  McKnight,  119  0.  G.  2519  (1905). 

Abandoned  for  Financial  Reasons.  Where  a  party  can 
make  satisfactory  proof  showing  that  his  inactivity  was 

87 


due  to  lack  of  finances  and  it  is  further  shown  that  his 
device  was  practically  operated,  such  inactivity  will  not 
be  regarded  as  an  abandonment  of  the  invention,  nor  as 
proof  that  his  reduction  to  j)ractice  was  merely  an  aban- 
doned experiment.  Colmnbia  Motor  Car  Co.,  et  al.  v. 
C.  A.  Ducrr  tO  Co.,  et  al.,  184  Fed.  898,  900. 

Work  Done  by  Hand  After  Alleged  Reduction  to  Prac- 
tice. Where  the  invention  is  intended  to  dispense  with 
hand  work  and  for  three  years  after  the  alleged  reduc- 
tion to  practice  the  inventor  continued  to  do  the  work  by 
hand,  such  circumstance  was  held  to  show  that  the  in- 
vention was  merely  an  abandoned  experiment  and  not  a 
reduction  to  practice.  Jenner  v.  Dickinson,  etc.;  116  0. 
G.  1181  (1904). 

Making  a  Second  Machine.  Where  the  inventor  makes 
a  second  machine  differing  from  the  first  merely  in  im- 
provement in  details,  such  fact  does  not  show  that  the 
first  machine  was  not  successful.  Brooks  v.  Smith,  110 
0.  G.  2013. 

157.  Concealment.  The  man  who  secretes  an  inven- 
tion contributes  nothing  to  the  public.  The  law  owes 
nothing  to  the  inventor  who  hides  away  his  invention, 
and  it  is  the  settled  doctrine  of  the  Court  of  Appeals  of 
the  District  of  Columbia,  and  of  the  Patent  Office,  that 
when  an  inventor  perfects  and  reduces  to  practice  an 
invention,  and  fails  for  an  unreasonable  period  to  take 
steps  to  give  it  to  the  public,  and  until  some  one  else  has 
independently  invented  and  patented  it,  the  earlier  in- 
ventor forfeits  his  right  to  a  patent  as  against  the  later 
and  more  diligent  inventor.  Brown  v.  Campbell,  201  0. 
G.  905,  41  App.  D.  C.  499;  Moiver  v.  Crisp,  83  0.  G. 
155 ;  Mason  v.  Hepburn,  84  0.  G.  147,  13  App.  D.  C.  86 ; 
Davis  V.  Forsythe  &  Forsythe,  87  0.  G.  516;  Mower  v. 
Duell,  Com'r.,  88  0.  G.  191;  Thomas  v.  Weston,  94  0. 
G.  985,  19  App.  D.  C.  373;  Wriejht  v.  Lorenz,  101  0.  G. 
664;  Macdonald  v.  Edison,  105  0.  G.  973;  Kendall  v. 
Wi>isor,  21  ITow.  322,  327,  328;  Matthes  v.  Burt,  114  0. 


G.  764,  24  App.  D.  C.  265 ;  Curtain  Supply  Co.  v.  Na- 
iional  Lock  Washer  Co.,  174  Fed.  45,  47;  Robinson  on 
Patents,  Sec.  389. 

The  doctrine  of  concealment  is  however,  a  strict  one 
which  will  not  be  enforced  except  in  cases  which  come 
clearly  within  it.  So  where  there  is  nothing  to  indicate 
that  a  party  was  induced  to  file  because  of  knowledge  of 
activity  on  the  part  of  another,  and  there  are  no  circum- 
stances to  impugn  his  good  faith,  or  he  can  satisfactorily 
explain  his  inaction  and  such  explanation  appears  rea- 
sonable and  in  accord  with  conduct  which  might  be  rea- 
sonably expected  of  a  person  who  was  honestly  seeking  to 
give  the  public  the  benefit  of  his  invention,  he  can  not  be 
charged  with  concealment.  Brown  v.  Blood,  105  0.  G. 
976  (1903);  Gaisman  v.  Gillette,  36  App.  D.  C.  440; 
Hubbard  v.  Berg,  40  App.  D.  C.  577  ;  Stewart  v.  Thomas, 
42  App.  D.  C.  222;  Piermann  v.  Chisholm,  44  App.  D. 
C.  460 ;  Lederer  v.  Walker,  182  0.  G.  511 ;  Hathaway  v. 
Field,  261  0.  G.  413,  1919  C.  D.  460;  Aufiero  v.  Mon- 
not,  242  0.  G.  750,  46  App.  D.  C.  297. 

The  fact  that  an  inventor  conceals  and  suppresses  his 
invention  after  reduction  to  practice  and  does  nothing 
more  with  it  in  the  way  of  giving  the  public  the  benefit 
of  it,  or  applying  for  a  patent,  until  he  obtains  some 
definite  knowledge  that  another  party  has  made  the  same 
invention  and  put  it  into  use,  or  has  applied  for  a  pat- 
ent, is  usually  sufficient  to  cause  the  first  inventor  to  lose 
any  rights  he  may  have  originally  had  in  such  invention. 
Matthes  v.  Burt,  24  App.  D.  C.  265,  114  0.  G.  764;  Gor- 
don V.  Wentworth,  31  App.  D.  C.  150,  135  0.  G.  1125 
(1908)  ;  Dreckschmidt  v.  Schaefer  &  Holmes,  246  0.  G. 
301 ;  Whitney  v.  Brewer,  177  0.  G.  1296.  So  where  a 
party  after  reducing  his  invention  to  practice,  put  it 
aside  for  more  than  a  year  until  he  discovered  that  his 
rival  had  put  his  invention  upon  the  market,  it  was  held 
that  he  must  be  charged  with  concealment.  Howard  v. 
Bowes,  31  App.  D.  C.  619,  137  0.  G.  733  (1908).    The 

89 


question  as  to  who  was  first  to  file  his  application  is  not 
material  as  to  one  who  is  properly  chargeable  with  con- 
cealment.    Whitney  v.  Brewer,  177  0.  G.  1296. 

Disclosing  to  Others  as  Affecting  Concealment.  Where 
the  inventor  does  not  keep  his  invention  secret  but  dis- 
closes it  to  others,  there  is  no  abandonment  of  the  inven- 
tion by  concealment.  Chisholm  v.  Pierman,  225  0.  G. 
1105  (1915).  Nor  where  the  inventor  showed  his  inven- 
tion to  his  opponent.  Meyer  v.  Sarfert,  102  0.  G.  1555 
(1903). 

158.  Originality.  One  of  the  questions  which  may 
arise  in  an  interference  and  which  is  pertinent  to  the 
issue  of  priority,  is  that  of  originality.  It  is  plain  that 
one  who  has  derived  his  knowledge  of  the  invention  from 
his  opponent  is  not  an  inventor.  Evidence  that  a  third 
party,  who  is  not  a  party  to  the  record,  invented  the  de- 
vice in  issue,  is  not  material,  hence  evidence  as  to  orig- 
inality will  be  confined  to  the  parties  to  the  interference. 
Foster  v.  Antisdel,  88  0.  G.  1527,  14  App.  D.  C.  552; 
Pope  V.  McKenzie,  38  App.  D.  C.  Ill,  176  0.  G.  1072; 
Thomas  v.  Weintrauh,  175  0.  G.  1097  (1911)  ;  Herman 
V.  Fullman,  107  0.  G.  1094;  Bauer  v.  Crone,  118  0.  G. 
1071;  DoUe  V.  Henry,  118  O.  G.  2249  (1905). 

159.  Burden  of  Proof.  The  burden  of  proving  lack  of 
originality  is  upon  the  one  who  asserts  it,  and  the  fact 
must  be  established  by  clear  evidence  in  any  case,  but 
where  the  party  against  whom  the  charge  is  made  has  a 
patent  which  was  granted  prior  to  applicant 's  filing  date, 
then  the  applicant  must  prove  beyond  a  reasonable 
doubt,  want  of  originality  in  such  patentee.  Kreag  v. 
Green,  124  0.  G.  1208  (1906)  ;  Funk  v.  Matteson  v. 
Haines,  100  0.  G.  1764  (1902),  20  App.  D.  C.  235,  100 
O.  G.  1563;  1902  C.  D.  297;  SivingleJiurst  v.  Ballard, 
265  0.  G.  459  (1919),  258  Fed.  973. 

160.  How  Established.  Lack  of  originality  is  a  diffi- 
cult fact  to  prove  since  direct  evidence  is  not  ordinarih'' 
obtainable   and   resort   must   be   had   to   circumstantial 

90 


evidenco.  As  lias  often  been  said  in  criminal  cases,  cir- 
cumstantial evidence  is  as  reliable  as  any  other  evidence, 
provided  the  circunxstances  pointing  to  the  existence  of 
the  fact  in  question  are  so  complete  in  detail  that  no 
other  reasonable  conclusion  can  be  drawn  from  them 
than  that  such  fact  exists.  Beinhart  v.  Gibson,  185  0. 
G.  1383,  39  App.  D.  C.  358. 

161.  Opportunity  of  Derivation.  It  is  proper  to  show 
that  a  party  had  an  opportunity  of  deriving  his  knowl- 
edge of  the  invention  from  his  opponent,  and  the  fact 
that  he  had  such  opportunity-  would  be  a  strong  circum- 
stance tending  to  establish  lack  of  originality,  but  the 
mere  existence  of  such  opportunity  would  not  of  itself 
be  sufficient  to  establish  lack  of  originality.  Wood  v. 
Poor,  126  0.  G.  391  (1906)  ;  Cutler  v.  Keeney,  17  Gour. 
66-2  (Aug.,  1905).  Where  two  parties  appear  with  the 
same  invention,  identical  in  many  novel  details,  there 
would  be  a  strong  suspicion  that  one  derived  his  knowl- 
edge from  the  other,  if  it  also  be  shown  that  he  had  an 
opportunity  to  so  derive  such  knowledge.  Beal  v.  Shu- 
man,  120  0.  G.  655  (1905). 

162.  Failure  to  Rebut  Evidence  of  Lack  of  Originality 
— Effect.  The  failure  of  a  party  to  rebut  the  sworn  state- 
ment of  his  adversary  that  he  fully  disclosed  the  inven- 
tion to  him,  is  conclusive  evidence  that  the  latter  was 
not  the  first  inventor,  and  the  oath  filed  with  the  appli- 
cation of  the  party  so  charged,  is  not  sufficient  to  over- 
come the  effect  of  such  testimony.  Winsloiu  v.  Austin, 
14  App.  D.  C.  137 ;  Hewlett  v.  Steiriberger,  40  App.  D. 
C.  287,  190  0.  G.  270;  Royce  v.  Kempshall,  125  0.  G. 
1347  (1906). 

163.  Sufficiency  of  Disclosure  to  Prove  the  Charge. 
Where  one  alleged  that  he  communicated  the  invention 
to  his  opponent,  he  must  show  exactly  what  the  nature  of 
the  communication  was  and  that  is  was  full  and  clear  as 
to  all  essential  elements  of  the  invention,  so  as  to  enable 
the  party  to  whom  such  disclosure  was  made  to  give  it 

91 


practical  form  and  effect  without  the  exercise  of  inven- 
tion on  his  part.  Anderson  v.  Wells,  122  0.  G.  3014 
(1906)  ;  Podelsak  v.  Mchmerneij,  26  App.  D.  C.  399,  120 
0.  G.  2127  (1906). 

Reduction  to  Practice  by  One  Inures  to  the  Benefit  of 
the  Other.  Where  one  who  has  derived  his  knowledge  of 
an  invention  from  another  reduces  it  to  practice,  such 
reduction  to  practice  inures  to  the  benefit  of  the  one 
who  made  the  disclosure.  Shuniafi  v.  Beall,  123  0.  G. 
1664. 

164.  Employer  and  Employee.  Where  one  employs 
another  to  construct  or  improve  a  machine,  the  presump- 
tion is  that  the  resulting  machine  or  improvement  is  the 
invention  of  the  employer,  in  the  absence  of  satisfactory 
proof  to  the  contrary.  Thihodeau  v.  Ilildreth,  117  0.  G. 
601,  25  App.  D.  C.  320.  The  burden  of  proof  that  the 
invention  is  that  of  the  employee  rather  than  that  of  the 
employer,  is  upon  the  employee  in  such  cases,  but  the  em- 
ployer must  show  that  he  disclosed  to  the  employee  more 
than  the  result  desired  and  that  he  did  not  leaA^e  it  to  the 
employee  to  invent  the  means  of  accomplishing  the  re- 
sult. He  must  show  that  his  instructions  not  only  em- 
bodied the  result  to  be  attained  but  also  the  means  of  ac- 
complishing the  result.  Corry,  et  al.  v.  McDermott,  117 
0.  G.  279,  25  App.  D.  C.  305 ;  Rolinson  v.  McCormick, 
128  0.  G.  3289  (1907)  ;  McKeen  v.  Jerdone,  34  App.  D. 
C.  163,  153  0.  G.  272;  Ladoff  v.  Dempster,  166  0.  G.  511, 
36  App.  D.  C.  520 ;  Eshelman  v.  Shantz,  189  0.  G.  1282, 
39  App.  D.  C.  434. 

When  the  Rule  Does  Not  Apply.  The  rule  does  not 
apply  unless  the  employee  is  engaged  in  perfecting  the 
device  under  the  direction  of  the  employer.  Soley  v. 
IIeT)J)ard,  5  App.  D.  C.  99;  Jameson  &  Yeserha  v.  Ells- 
worth, 192  0.  G.  218,  40  App.  D.  C.  164 ;  Schroeder  v. 
Wageley  &  Stocke,  118  O.  G.  268  (1905).  Nor  where 
one  is  employed  merely  as  a  draughtsman.  Miller  v. 
Blackburn,  172  0.  G.  549  (1911).    Nor  where  the  mak- 

92 


iiig-  of  the  improvement  is  not  within  the  line  of  the 
duties  of  the  employee.  Peckham  v.  Price,  118  0.  G. 
1934  (1905). 

Ancillary  Features  to  the  Main  Invention  Belong  to  the 
Employer.  Ore  lift  v.  McDonald  &  McDonald,  118  0.  G. 
591  (1905),  27  App.  D.  C.  228,  123  0.  G.  1287  (1906)  ; 
Moody  V.  Colby,  198  0.  G.  899,  41  App.  D.  C.  248; 
Lihhy  v.  Farmer  &  Turner,  18  Gour.  37-14  (May,  1906)  ; 
Kreag  v.  Green,  127  0.  G.  1581  (1906)  ;  Ageivan  v.  Jor- 
dan, 7  Wall.  583,  602;    Gedye  v.  Cromwell,  19  App.  D. 

C.  198;  Milton  v.  Kingsley,  7  App.  D.  C.  531;  Larkin 
V.  RicJumhon,  127  0.  G.  2394  (1906). 

To  What  Improvements  an  Employee  Is  Entitled.  The 
employer  is  entitled  to  any  improvements  made  by  the 
employee  in  the  discharge  of  his  duties  in  constructing 
or  improving  a  machine  which  are  due  to  the  exercise  of 
his  mechanical  skill,  but  if  the  employee  goes  farther 
than  mechanical  skill  enables  him  to  do,  and  makes  an 
actual  invention,  he  is  entitled  to  the  benefit  thereof. 
McKeen  v.  Jerdone,  153  0.  G.  272,  34  App.  D.  C.  163 ; 
Ladojf  V.  Dempster,  166  0.  G.  511,  36  App.  D.  C.  520; 
S'parkman  v.  Higgins,  1  Blatch.  206 ;  Yoder  v.  Mills,  34 
0.  G.  1048 ;   Huehel  v.  Bernard,  90  O.  G.  751,  15  App. 

D.  C.  510;  Neth  cD  Tamplin  v.  Ohmer,  etc.,  135  0.  G. 
662  (1908),  30  App.  D.  C.  478. 

Fellow  Employees — Principal  and  Assistant.  The  same 
rule  of  law  that  applies  to  employer  and  employee,  ap- 
plies with  like  force  to  principal  and  assistant,  though 
they  are  fellow  employees.  Brannstein  v.  Holmes,  133 
0.  G.  1937  (1908). 

165.  Inoperativeness.  Where  a  party  to  an  interfer- 
ence desires  to  present  evidence  that  the  structure  of 
his  opponent  is  inoperative,  and  since  the  question  of 
the  operativeness  of  the  device  goes  to  the  question  of  the 
right  to  make  the  claims,  he  should  proceed  in  accord- 
ance with  Rule  130,  first  to  prosecute  a  motion  to  dis- 
solve before  the  Primary  Examiner   (Law  Examiner), 

08 


and  subsequently,  if  necessary,  bring  a  motion  before  the 
Examiner  of  Interferences  for  leave  to  take  testimony  as 
to  the  operativeness  of  his  opponent's  device.  Pym  v. 
Hadaivay,  125  0.  G.  1702;  Lowry  &  Cowley  v.  Spoon, 
122  0.  G.  2687;  Brown  v.  Stroud,  122  0.  G.  2688.  But 
in  Bitter  v.  Eralau,  104  0.  G.  1897,  it  was  held  that  a 
party  must  anticipate  ordinary  attacks  upon  his  evi- 
dence and  that  testimony  taken  as  to  the  operativeness 
of  a  de^^ce  offered  in  cA'idence  by  a  senior  party  would 
not  be  stricken  out. 

Character  of  Showing  Required — Motion  to  Take.  Testi- 
mony as  to  Operativeness.  As  a  prerequisite  to  the  right 
to  take  testimony  as  to  the  operativeness  of  an  opponent 's 
device  it  is  not  necessary  that  the  mo^dng  party  make  an 
absolutely  conclusive  showing  of  inoperativeness,  but  if 
he  makes  out  a  prima  facie  case  of  inoperativeness 
thereof,  which  does  not  extend  to  his  own,  and  it  appears 
that  it  would  be  a  matter  of  great  difficulty  to  decide 
the  question  of  operativeness  from  a  mere  inspection  of 
the  application  and  it  can  not  be  determined  that  a  de- 
cision so  arrived  at  would  be  the  same  as  would  be 
reached  in  the  light  of  information  that  might  be  derived 
from  witnesses  expert  in  the  art  to  which  the  invention 
relates,  a  motion  for'  leave  to  take  testimony  should  be 
granted.  Lowry  tO  Cowley  v.  Spoon,  12-1  0.  G.  1846 
(1906)  :  Brown  v.  Stroud,  122  0.  G.  2688. 

Counter  Affidavits.  While  an  opposing  party  may  at- 
tack the  sufficiency  of  the  motion,  he  should  not  present 
counter  affidavits.  Clement  v.  Browne  v.  Stroud,  126  0. 
G.  2589  (1907). 

166.  Public  Use.  It  may  not  be  possible  to  give  any 
accurate  definition  of  the  term  "public  use,''  but  the 
general  principles  by  which  we  may  determine  whether 
or  not  a  certain  use  is  a  public  use  or  otherwise,  are 
fairl}-  well  established  by  the  decisions. 

The  use  of  an  invention  hy  the  inventor  himself,  or  of 
another  person  under  his  direction,  by  way  of  experi- 

94 


merit,  and  in  order  to  bring  the  invention  to  perfection, 
has  never  been  regarded  as  a  public  use.  When  the  sub- 
ject of  the  invention  is  a  machine,  it  may  be  tested  and 
tried  in  a  building  either  with  or  without  closed  doors, 
in  either  case,  such  use  is  not  a  public  use  within  the 
meaning  of  the  statute  so  long  as  the  inventor  is  en- 
gaged, in  good  faith,  in  testing  its  operation.  He  may 
see  cause  to  alter  it  or  improve  it  or  not.  His  experi- 
ments wall  reveal  the  fact  whether  any  alterations  may 
be  necessary,  if  durability  is  one  of  the  qualities  to  be 
attained,  a  long  period,  perhaps  years,  may  be  necessary 
to  enable  the  inventor  to  discover  whether  his  purpose 
is  accomplished.  And  though  during  all  that  period  he 
may  not  find  that  any  changes  are  necessary,  yet  he  may 
be  justly  said  to  be  using  the  machine  only  by  way  of  ex- 
periment, and  no  one  would  say  that  Such  use,  pursued 
with  a  bona  fide  intent  of  testing  the  quality  of  the  ma- 
chine, would  be  public  use,  within  the  meaning  of  the 
statute.  So  long  as  he  does  not  voluntarily^  allow  others 
to  use  it,  and  so  long  as  it  is  not  on  sale  for  general  use, 
he  keeps  the  invention  under  his  own  control  and  does 
not  lose  his  right  to  a  patent.  It  would  not  be  necessary 
in  such  case  that  his  machine  be  put  up  and  used  only  in 
the  inventor's  own  shop  or  premises.  He  may  have  it 
put  up  and  used  on  the  premises  of  another,  and  the  use 
may  inure  to  the  benefit  of  the  owner  of  the  establish- 
ment. Still,  if  used  under  the  surveillance  of  the  inven- 
tor, and  for  the  purpose  of  enabling  him  to  test  the  ma- 
chine and  ascertain  whether  it  will  answer  the  purpose 
intended,  and  make  such  alterations  and  improvements 
as  experience  demonstrates  to  be  necessary,  it  will  still 
be  an  experimental  use  and  not  a  public  use,  within  the 
meaning  of  the  statute.  But  if  the  inventor  allows  his 
machine  to  be  used  by  other  persons  generallj^,  either 
with  or  without  compensation,  or  if  it  is  with  his  con- 
sent, put  on  sale  for  such  use,  then  it  will  be  in  public 
use  and  on  public  sale  within  the  meaning  of  the  law. 

95 


Elizabeth  v.  American  Nicholson  Paving  Co.,  97  U.  S. 
135,  24  L.  Ed.  1004 ;  Beedle  v.  Bennet,  122  U.  S.  77,  30 
L.  Ed.  1074. 

Whether  the  use  of  an  invention  is  public  or  private, 
does  not  necessarily  depend  upon  the  number  of  per- 
sons to  whom  its  use  is  known.  If  the  inventor,  having 
made  his  device,  gives  or  sells  it  to  another,  to  be  used 
by  the  donee  or  vendee,  without  limitation  or  resftiction, 
or  injunction  of  secrecy,  and  it  is  so  used,  such  use  is 
public,  within  the  meaning  of  the  statute,  even  though 
the  use  and  knowledge  of  the  use  may  be  confined  to  one 
person.  Egghert  v.  Lippman,  104  U.  S.  333,  336;  Root 
V.  Third  Ave.  R.  Co.,  146  U.  S.  221,  36  L.  Ed.  951.  So 
where  one  uses  the  invention  himself  for  his  own  profit 
and  advantage,  it  is  public  use.  International  Tooth 
Crown  Co.  v.  Gaylord,  140  U.  S.  63,  35  L.  Ed.  347. 

Where  the  invention  is  a  machine  designed  to  manu- 
facture articles,  the  inventor  maj^  make  use  of  or  sell 
such  product  as  he  may  make  while  so  experimenting, 
without  bringing  himself  within  the  statute  as  to  public 
use.  But  if  the  invention  is  upon  the  article,  the  sale  of 
the  article  would  be  public  use.  Bryce  Bros.  Co.  v. 
Seneca  Glass  Co.,  140  Fed.  161. 

167.  Character  of  Evidence  as  to  Experimental  Use. 
Where  use  for  more  than  two  years  prior  to  the  appli- 
cation for  a  patent  is  established,  it  is  incumbent  upon 
the  patentee  to  show  by  clear,  unequivocal  and  convinc- 
ing evidence  that  such  use  was  experimental  with  a  view 
to  perfecting  the  mechanism  and  improve  its  operation 
or  test  its  qualities.  Smith  rf-  Griggs  Mfg.  Co.  v.  Sprague, 
]23  U.  S.  264,  31  L.  Ed.  146. 

Public  Use  in  Interference  Cases.  It  seems  that  the  ac- 
tiou  of  the  Patent  Office  relating  to  public  use  is  not 
coiiclusive  against  the  parties  and  a  review  may  be  had 
in  an  action  in  ('(juity  under  Section  4918,  Revised  St. 
Ditigen  v.  liaciyie  Paper  Goods  Co.,  et  al.,  181  Fed.  394. 

The  fact  that  a  party  to  an  interference  proceeding 

96 


has  been  awarded  a  jud<>iiie]it  of  priority  does  not  nec- 
essarily mean  that  he  is  entitled  to  a  patent,  for  it  may 
appear  in  the  course  of  tlie  proceedings  that  there  is  a 
statutory  bar  to  a  grant  of  a  patent  to  him.  Sohey  v. 
Holschlaw,  28  App.  D.  C.  65,  126  0.  G.  3041 ;  1907  C.  D. 
465;  Burson  v.  Vogcl,  29  App.  D.  C.  348,  131  0.  G.  942; 
United  States  ex  rel.,  Dimkley  v.  Ewing,  Com'r,  203  0. 
G.  603,  42  App.  D.  C.  176. 

168.  Public  Use  Proceedings  When  and  How  Insti- 
tuted. Since  the  institution  of  public  use  proceedings  is 
within  the  discretion  of  the  Commissioner,  after  consid- 
eration of  the  prima  facie  proofs  presented,  the  peti- 
tioner should  present  with  his  petition  sufficient  affi- 
davits to  make  out  a  prima  facie  case  of  public  use 
against  the  applicant,  serve  the  other  party  or  parties 
with  due  notice  of  the  filing  and  hearing  of  the  petition, 
offer  to  produce  the  witnesses  for  examination  and  bear 
the  expense.  And  where  such  petition  is  filed  before  the 
taking  of  testimony  as  to  prioritj^,  the  public  use  pro- 
ceeding will  take  precedence.  In  re  United  States  Wood 
Preserving  Co.,  153  0.  G.  271  (1910)  ;  Schrum  v.  Baum- 
garten,  104  0.  G.  577. 

Petition  Presented  Pending  Motion  to  Dissolve.  If  a 
motion  to  dissolve  is  pending  at  the  time  of  the  filing  of 
the  petition  to  institute  public  use  proceedings,  such  mo- 
tion should  be  determined  before  proceeding  to  deter- 
mine the  question  of  public  use.  The  reason  for  this  is 
that  a  ruling  on  the  motion  to  dissolve  may  make  it  un- 
necessary to  incur  the  expense  which  might  be  involved 
in  the  public  use  proceeding.  Snyder  v.  Woodivard,  173 
0.  G.  863  (1911)  ;  In  re  United  States  Wood  Preserving 
Co.,  153  0.  G.  271. 

After  Testimony  Has  Been  Taken  as  to  Priority.  After 
the  parties  have  taken  their  testimony  as  to  priority,  the 
interference  should  not  be  suspended  for  the  purpose  of 
instituting  public  use  proceedings,  since  a  ruling  on  the 
question  of  priority  may  make  it  unnecessary  to  deter- 

a  97 


mine  the  question  of  public  use,  unless  the  testimony 
shows  that  the  party  against  whom  the  public  use  pro- 
ceeding is  to  be  instituted,  knew  of  the  public  use  and  his 
application  was  therefore  fraudulently  filed.  Luellen  v. 
Claussen  &  Clans,  190  0.  G.  265  (1913)  ;  Kneisly  v. 
Kaisling,  174  0.  G.  830  (1911);  BoUe  v.  Henry,  118 
0.  G.  2249 ;  Wert  v.  Borst,  etc.,  122  0.  G.  2062 ;  Bre7i- 
izer  V.  RoUnson,  166  0.  G.  1281  (1911). 

As  Between  Applicants.  In  Sarfert  v.  Meyer,  98  0.  G. 
793;  1902  C.  D.  80,  Commissioner  Moore  said:  "Where 
the  interference  is  between  pending  applications,  the  in- 
stitution of  public  use  proceedings  prior  to  the  final  de- 
termination of  priority  is  uniformly  refused,  for  the  rea- 
son that  if  the  bar  of  public  use  or  sale  be  established 
against  one  of  the  parties,  it  might  leave  the  road  clear 
to  the  grant  of  a  patent  to  the  other,  who  might  perhaps 
not  be  the  prior  inventor." 

When  Shown  by  the  Evidence  in  an  Interference — 
Action  Under  Rule  126.  The  Examiner  of  Interferences, 
or  Board  of  Examiners  in  Chief,  may  either  before  or  in 
their  decision  on  the  question  of  priority,  direct  the  at- 
tention of  the  Commissioner  to  the  fact  that  in  their 
opinion  the  issue  is  not  patentable  because  of  two  years' 
public  use.  In  such  case  the  Commissioner  refers  the 
question  to  the  Primary  Examiner  for  a  report  thereon. 
If  the  Primary  Examiner  reports  that  in  his  opinion  the 
issue  is  not  patentable  because  the  evidence  shows  more 
than  two  years'  public  use  prior  to  the  filing  of  the 
application,  the  office  will  not  be  justified  in  continuing 
the  interference  without  investigating  and  finally  deter- 
mining the  question  of  public  use.  But  the  evidence 
taken  in  the  intorferciK'C  can  not  be  used  as  a  basis  for 
final  judgment  as  to  that  fiuestion  without  giving  the 
parties  an  opportunity  to  lake  further  testimony  thereon. 
The  Commissioner  will  then  notify  the  parties  that  the 
testimony  already  taken  will  be  used  as  prima  facie  case 
in  support  of  the  allegation  of  public  use  and  if  any  of 

98 


them  wishes  to  take  testimony,  to  notify  tlie  Commis- 
sioner within  a  specified  time.  If  such  notice  is  given 
time  will  be  given  by  the  Commissioner  in  which  the 
parties  may  take  their  further  proofs.  Niedrmghaus  v. 
McConncll,  121  0.  G.  338  (1905).  Allegations  as  to  pub- 
lie  use  must  apply  to  all  the  counts  to  warrant  a  suspen- 
sion of  proceedings.  Moss  v.  Blaisdell,  113  0.  G.  1703; 
Patec  V.  Cook,  16  Gour.  2-1. 

WITNESSES. 

170.  Subpoena  for  Witnesses.  By  the  provisions  of 
Section  4906  R.  S.,  the  clerk  of  any  court  of  the  United 
States  for  any  district  wherein  testimony  is  taken  for 
use  in  a  contested  cause  in  the  Patent  Office,  shall,  upon 
application  of  any  part}-  thereto,  or  of  his  agent  or  at- 
torney, issue  a  subpoena  for  any  witness  residing  or  being 
within  such  district,  commanding  him  to  appear  and  tes- 
tify before  any  officer  in  such  district  authorized  to  take 
depositions  and  affidavits,  at  any  time  and  place  in  the 
subpoena  stated.  But  no  witness  shall  be  required  to  at- 
tend at  any  place  more  than  forty  miles  from  the  place 
where  the  subpoena  is  served  upon  him.  His  fees  and  ex- 
penses must  be  paid  or  tendered  unless  he  waives  them, 
and  his  failure  to  demand  them  is  not  a  waiver.  Ln  re 
Boeshore,  125  Fed.  651. 

The  Patent  Office  has  no  power  to  compel  the  attend- 
ance of  witnesses,  nor  to  compel  a  party  to  an  interfer- 
ence to  submit  himself  for  examination  by  subpoena  or 
.render  a  judgment  against  him  for  failure  to  do  so.  Hen- 
derson c£-  Cantley  v.  Kindervater,  192  0.  G.  741;  Lind- 
strom  V.  Lipschuts,  120  0.  G.  904;  Kelly,  et  al.  v.  Park, 
et  al,  81  0.  G.  1931 ;  Bay  State  Belting  Co.  v.  Kelfon- 
Bruce  Mfg.  Co.,  127  0.  G.  1580. 

171.  Application  to  Force  Obedience.  The  proper 
form  of  application  to  enforce  obedience  to  a  subpoena 
issued  under  this  section  is  a  petition  to  the  court  for  an 

99 


attachment  for  contempt.  Brunggcr  v.  Smith,  49  Fed. 
124. 

Subpoena  duces  tecum.  This  section  does  not  authorize 
the  issue  of  a  subpoena  duces  tecum.  Ex  parte  Moses, 
53  Fed.  348 ;  In  re  Outcalt,  149  Fed.  228. 

Failure  to  attend  or  refusal  to  testify.  Sec.  4908  K.  S. 
provides  that  one  who  has  been  served  with  a  subpoena 
and  neglects  or  refuses  to  appear,  or  after  appearing, 
refuses  to  testify,  may  be  punished  by  the  judge  of  the 
court  whose  clerk  issued  the  subpoena.  But  a  witness 
shall  not  be  required  to  disclose  any  secret  invention  or 
discovery  made  or  owned  by  himself. 

172.  Refusal  to  Testify — Suppression  of  Testimony.  It 
has  been  held  that  the  testimony  of  a  witness  may  be 
suppressed  on  account  of  his  refusal  to  furnish  material 
evidence.    LincUtrom  v.  Lipscluitz,  120  0.  G.  904  (1905). 

173.  Solicitor  of  Patents  as  a  Witness.    A  solicitor  of 
patents  who  is  not  an  attorney-at-law,  is  not  privileged 
from  answering  questions  under  this  section,  as  he  can  ^ 
not  invoke  the  privilege  of  confidential  communication      xlA 
between  attorney  and  client.     Brungger  v.  Smith,  59 

Fed.  124. 

174.  Cross-Examination  of  Witnesses.  There  will  be 
no  attempt  here  to  discuss  in  detail  matters  pertaining 
to  the  cross-examination  of  witnesses,  but  merely  to  state 
some  of  the  general  rules. 

Leading  Questions.  It  is  well  settled  that  the  cross- 
examiner  is  entitled  to  ask  leading  questions.  Hempton 
V.  State,  111  Wis.  127,  86  N.  W.  596. 

Assuming  Facts  Not  Proved.  Counsel  in  his  cross- 
questions  should  not  assume  that  the  witness  has  testified 
to  facts  to  which  he  has  not  testified.  Rowland  v.  Oak- 
land etc.,  R.  R.  Co.,  115  Cal.  487,  47  Pac.  120. 

Argumentative  Questions.  Questions  should  not  be 
argniiiciitiilivc.    lUople  v.  Harlan,  133  Cal.  16,  65  Pac.  9. 

Bringing  Out  New  Matter.  Where  on  cross-examina- 
tion coun.sel  goes  outside  the  direct  examination  and  in- 

100 


quires  about  new  matters,  not  related  thereto,  he  makes 
the  witnesses  his  own  as  to  such  new  matter  and  lie  is  not 
entitled  to  ask  leading  questions  in  relation  thereto, 
though  this  is  a  matter  within  the  discretion  of  the  court, 
according  to  tlie  circumstances.  Legg  v.  Drake,  1  Ohio 
!St.  28().   29  Ala.  5:)8. 

Immaterial  Matters.  Wiiere  on  direct  examination  a 
witness  has  been  asked  about  immaterial  matters,  the 
other  part}'  has  a  right  to  cross-examine  with  reference 
thereto.  L.  &  N.Ji.  Co.  v.  Hill,  115  Ala.  334,  22  South. 
163. 

175.  Acts  and  Conversations.  Where  an  act  or  a 
statement  or  a  part  of  a  conversation  of  a  witness  is  put 
in  evidence,  he  may  be  cross-examined  respecting  every- 
thing connected  with  that  act,  or  all  the  circumstances 
under  which  the  statement  was  made,  or  the  entire  con- 
versation ma}'  be  brought  out,  even  though  parts  of  it 
may  be  immaterial.  In  other  words,  when  the  party  call- 
ing a  witness  opens  up  a  subject,  his  opponent  is  entitled 
to  inqaire  all  about  that  subject.  Vogel  v.  Harris,  112 
Ind.  494,  14  N.  E.  385 ;  State  v.  Pancoast,  35  L.  R.  A. 
518;  Hartncss  v.  Goddard,  176  Mass.  326,  57  N.  E.  677; 
Gilmer  v.  Higleij,  110  U.  S.  47. 

176.  Showing  Hostility,  Bias  and  Prejudice.  Great 
latitude  is  permitted  in  cross-examining  a  witness  with  a 
view  to  showing  hostility  to  a  party;  hence  he  may  be 
asked  as  to  his  interest  in  the  case,  his  relations  to  the 
party  calling  him,  his  feeling  toward  the  opposing  party, 
or  any  facts  or  circumstances  which  would  tend  to  reveal 
his  state  of  mind  with  reference  to  the  parties.  People  v. 
TJwmpson,  92  Cal.  506,  28  Pac.  589. 

177.  Impeachment  of  Witness.  A  wdtness  may  be  im- 
peached by  showing  that  he  made  statements  at  some 
other  time  and  place  which  are  contrary  to  those  testi- 
fied to,  but  it  is  necessary  to  ask  the  witness  on  cross- 
examination  whether  he  made  such  statements  at  a  certain 
time  and  place  and  to  a  certain  person.    If  he  denies  liav- 

101 


iug  made  the  stateiiieiit,  the  person  to  whom  he  is  alleged 
to  have  made  them,  ma}^  be  called  to  prove  the  facts  as 
laid  in  the  impeaching  question.  Conrad  v.  Griffey,  16 
How.  (U.  S.)  38;  Aneals  v.  People,  134  111.  401;  Mc- 
Culloch  V.  Dohson,  133  N.  Y.  114;  Skclto?i  v.  Fenton 
Electric  Ligiit  etc.  Co.,  100  Mich.  87. 

Evidence  Must  Be  Material.  You  cannot  impeach  a 
witness  upon  an  immaterial  matter,  that  is,  matter  not 
material  to  the  issue  on  trial.  U.  8.  v.  Dickinson,  2  Mc- 
Lean (U.  S.)  325;  People  v.  Tipley,  84  Cal.  651;  Elbert 
V.  Witman,  122  Ind.  538 ;   Com.  v.  Jones,  155  Mass._  170. 

178.  Surprise  by  Hostile  Witness.  It  not  infrequently 
happens  that  a  part}^  calling  a  witness  is  surprised  by  the 
witness  testifj'ing  directly  opposite  to  what  he  indicated 
to  the  part}'  calling  him.  In  such  case  the  party  calling 
him  is  usually  permitted  to  cross-examine  him  to  a  lim- 
ited extent,  and,  in  some  jurisdictions,  to  impeach  him, 
not  for  the  purpose  of  showing  that  his  original  state- 
ment to  the  party  calling  him  was  true,  but  for  the  pur- 
pose of  setting  the  party  who  called  him  right  before  the 
court  or  jury. 

179.  Party  as  a  Witness — Presumptions  Arising  From 
Failure  to  Testify  or  Produce  Evidence.  Where  a  party 
refuses  to  answer  questions,  it  will  be  presumed  that  the 
facts  are  against  him.  Perri  v.  Thoma,  188  0.  G.  1053, 
39  App.  D.  C.  460. 

180.  Failure  to  Call  a  Material  Witness.  AAHiere  a 
party  fails  to  call  a  material  witness  and  offers  no  ex- 
planation for  not  calling  him,  the  presumption  is  that  his 
testimony  would  have  been  unfavorable.  McConnell  v. 
Wood,  250  0.  0.  7G7;  Blackman  v.  Ale.rander,  113  0.  G. 
1703,  26  App.  D.  C.  541,  121  0.  G.  1979;  Turnhull  v. 
Curtis,  120  0.  G.  2442  (1905)  ;  Schmidt  v.  Clark,  138 
0.  G.  768,  32  App.  D.  C.  290.  But  where  the  witness 
might  have  been  called  by  either  party  and  sucli  Avitness 
was  the  only  person,  aside  from  the  parties,  who  knew 
certain  facts,  and  it  appeared  that  the  witness  was  in  the 

102 


onii)I()y  of  one  of  llir  parties,  it  was  licld  that  llu-  party 
ill  wliosc  employ  he  was  would  have  called  hini,  if  his 
testimony  would  have  been  favorable  to  such  party. 
Gallagher  v.  Hastings,  103  0.  G.  1165,  21  App.  D.  C.  88. 
Failure  to  Call  a  Hostile  Witness.  Where  an  assignee 
failed  to  call  the  inventor  and  it  was  shown  that  the  in- 
ventor was  hostile  to  such  assignee,  and  it  was  within  the 
power  of  the  opposing  party  to  have  called  such  appli- 
cant, no  unfavorable  presumption  arises  against  the  as- 
signee. Stoetzel  V.  Fordyce,  21  Gour.  2-4  (Jan.,  1909) ; 
Silverman  v.  Ileudrickson,  99  0.  G.  445 ;  1902  C.  D.  123. 

181.  Failure  to  Deny  Charges  of  Lack  of  Originality. 
When  the  facts  are  peculiarly  within  the  knowledge  of  a 
party  and  he  fails  to  take  the  stand  and  testify  thereto, 
the  presumption  is  that  he  could  not  deny  the  truth  of 
the  e^ddence  offered  against  him.  Sleinherger  v.  Hew- 
lett, 183  0.  G.  1308  (1912)  ;  Winslow  v.  Austin,  86  0. 
G.  2171;  Royce  v.  Kempsliall,  125  0.  G.  1347  (1906); 
Rollfe  V.  Kaisling  v.  Leeper,  143  0.  G.  562,  32  App.  D. 

C.  582.  So  also  a  failure  to  produce  evidence  clearly 
within  the  control  of  a  party,  raises  a  presumption  that 
if  produced,  it  would  have  been  unfavorable.  Huff  v. 
Gulic,  179  0.  G.  579,  38  App.  D.  C.  334.  And  w^here  the 
circumstances  are  such  that  a  party  might  easily  dis- 
prove the  facts  sought  to  be  established  by  his  opponent, 
if  untrue,  and  he  fails  to  make  any  effort  to  disprove 
them,  the  presumption  is  that  they  could  not  be  dis- 
proved.   Schneider  v.  Briggs,  162  0.  G.  1000,  36  App. 

D.  C.  116;  ^yhitman  v.  King,  160  0.  G.  260,  35  App.  D. 
C.  449. 

182.  Failure  to  Produce  Sketches  or  Devices.  Where 
a  party  claims  to  have,  produced  certain  sketches,  draw- 
ings, or  to  have  completed  a  certain  device,  he  should 
produce  the  same  or  make  a  satisfactory  explanation  for 
not  doing  so.  In  the  absence  of  a  showing  of  any  reason 
for  not  producing  such  evidence,  an  unfavorable  pre- 
sumption arises.    Saunders  v.  Miller,  146  0.  G.  505,  33 

103 


App.  D.   C.  456;    Turnhull  v.   Curtis,  120  0.  G.  2442 
(1905). 

183.  Failure  to  Rebut.  Where  the  circuuLstances  show 
that  the  evidence  produced  by  a  party  might  readily  be 
disproved,  if  untrue,  and  his  opponent  maJ^es  no  effort 
to  disprove  the  facts,  such  failure  raises  an  unfavorable 
presumption  against  such  opponent.  So  where  the  evi- 
dence clearly  showed  that  a  certain  machine  embodying 
every  element  of  the  issue  was  in  existence  and  readily 
accessible  to  the  party  who  might  be  expected  to  dis- 
prove its  existence  if  he  entertained  any  doubt  -of  the 
truth  of  such  evidence,  but  he  offers  no  evidence  upon 
that  subject,  the  existence  of  the  machine  will  be  re- 
garded as  established.  Smith  v.  Kilgren,  215  0.  G.  324, 
43  App.  D.  C.  193. 

Employee  and  Employer — Independent  Inventorship. 
The  unexplained  failure  of  an  employer  to  take  the 
stand,  necessitates  an  inference  in  favor  of  the  em- 
ployees' independent  inventorship.  Peckham  v.  Price, 
118  0.  G.  1934  (1905),  26  App.  D.  C.  556. 

184.  Conduct  Inconsistent  With  Claims  to  Invention. 
The  conduct  of  a  party,  acts  as  well  as  words,  is  often 
more  potent  in  revealing  the  truth  than  the  testimony 
he  renders  after  becoming  involved  in  a  controversy  with 
another.  Hence  it  is  important  in  weighing  the  testi- 
mony to  consider  what  happened  prior  to  as  well  as  after 
the  controversy  arose,  and  where  a  party  claimed  to  have 
made  an  invention  at  a  certain  time,  but  continued  there- 
after to  experiment  upon  other  inventions  for  securing 
the  same  ultimate  results,  and  full  records  at  the  time  do 
not  mention  the  invention  in  issue,  and  patents  were 
taken  out  on  other  inventions,  but  no  application  was 
filed  on  the  invention  in  issue,  it  was  held  that  the  con- 
duct of  the  inventor  at  the  time  is  stronger  evidence 
again.st  his  claim  to  invention  than  is  the  testimony  of 
him.self  and  witnesses  in  favor  of  the  same.  Sherwood  v. 
Drewsen,  124  0.  G.  1205  (1906)  ;   Gibbons  v.  Poller,  124 

104 


0.  G.  624  (1906)  ;  Larkin  v.  Richardson,  122  0.  G.  2390 
(1906). 

185.  Failure  to  Assert  Claim  to  Invention.  Where  a 
party  fails  to  assert  nny  claim  to  an  invention  under 
circumstances  which  would  indicate  that  another  is 
claiming  it,  and  the  former  constructed  no  device  em- 
bodying the  issue,  the  presumption  is  that  he  did  not 
invent  it.  Hansen  v.  Dean,  129  0.  G.  483  (1907),  29 
App.  D.  C.  112.  Where  a  senior  party  informed  a  junior 
party  that  he  had  applied  for  a  patent  on  the  invention 
and  the  junior  party  made  no  protest  and  signified 
neither  by  word  nor  act  that  the  invention  was  his  own, 
it  was  held  that  then,  if  ever,  he  should  have  spoken. 
Scott  V.  Scott,  96  0.  G.  1650;  1901  C.  D.  419.  And 
where  a  party  testified  in  favor  of  another  in  an  interfer- 
ence, making  no  claim  at  the  time  to  his  own  invention 
of  the  issue,  but  afterward  filed  an  application  therefor, 
it  was  held  that  it  was  his  duty  to  have  asserted  his. claim 
earlier.  Lloyd  v.  Antisdel,  95  0.  G.  1645;  1901  C.  D. 
371. 

And  where  a  party  fails  to  assert  his  claim  to  an  in- 
vention after  knowledge  that  others  are  claiming  it,  his 
silence  at  a  time  when  he  should  have  spoken,  discredits 
his  testimony.  McKnight  v.  Pohl  c&  Croasdalc,  22  App. 
D.  C.  219,  105  0.  G.  977  (1903)  ;  Barter  v.  Barrett,  114 
0.  G.  975,  24  App.  D.  C.  300. 

Delay  in  Copying  Claims  of  a  Patent — Estoppel.  In 
ChapnuDi  v.  Wi)itroat]i,  decided  March  1,  1920  (not  yet 
reported ) ,  the  United  States  Supreme  Court  held  that  an 
applicant  has  two  years  from  the  date  of  filing  of  a  di- 
visional application,  in  which  to  copy  the  claims  of  an 
issued  patent  for  the  purpose  of  interference.  Up  to 
1916,  it  had  been  the  practice  to  allow  two  years  in  which 
to  copy  the  claims  of  a  published  patent,  but  at  that  time 
the  Court  of  Appeals,  D.  C,  in  Rountree  v.  Sloan,  45 
App.  D.  C.  207,  held  that  one  who  delayed  for  more  than 
one  year  to  copy  the  claims  of  a  published  patent,  was 

105 


•iuilty  of  laches  and  estopped  from  copying  such  claims 
for  the  purpose  of  interference.  This  ruling-  was  fol- 
lowed by  the  office  until  the  reversal  of  the  Court  of  Ap- 
peals D.  C.  by  the  United  States  Supreme  Court,  in 
Chapman  v.  Winttwath,  March  1,  1920. 

186.  Failure  to  Disclose  Invention.  And  where  a 
party  fails  to  disclose  the  invention  in  issue  under  cir- 
cumstances which  would  naturalh^  induce  him  to  do  so, 
the  presumption  is  that  he  did  not  have  the  invention. 
Slaughter  v.  Halle,  102  0.  G.  469  (1903)  ;  Hope,  Jr.  v. 
Yoicjht,  115  0.  G.  1585  (1905),  25  App.  D.  C.  22.  - 

187.  Delay  in  Filing  Application  and  Failure  to  Assert 
Alleged  Right.  Where  a  party  permitted  a  manufac- 
turer to  manufacture  the  device  in  issue  for  a  period  of 
nearly  two  years,  without  claiming  the  invention,  or  mak- 
ing protest,  and  did  not  file  an  application  for.  patent  for 
over  four  years  after  the  alleged  discovery  and  not  until 
after  he  had  difficulties  with  such  manufacturer,  such 
silence  and  failure  to  earlier  file  an  application,  was  held 
to  discredit  his  claim  to  inventorship.  Wilson  &  Wil- 
lard  Mfg.  Co.  v.  Bole,  et  al.,  227  Fed.  607,  610. 

188.  Testimony  Impeached  by  Previous  Declarations. 
Where  the  testimony  of  an  inventor  is  shown  to  be  at 
variance  with  his  preliminary  statement  and  with  affi- 
davits filed  during  the  progress  of  his  application,  or  in 
conflict  with  the  oath  filed  with  the  application,  such 
facts  should  weigh  strongly  against  the  credibility  of  the 
witness,  unless  a  satisfactory  explanation  is  made  of 
such  variance.  Barnes  v.  Swartivout,  161  0.  G.  1045 
(1910)  ;  Tripler  v.  Linde,  102  0.  G.  1297  (1903). 

189.  Presumption  Arising  From  Knowledge  and  Ex- 
perience of  a  Party.  The  knowledge  and  experience  of  a 
party  in  general,  and  particularly  his  experience  in  and 
familiarity  with  the  subject  in  issue,  will  be  considered 
in  weighing  the  testimony.  Therefore,  as  between  two 
parties,  each  claiming  a  disclosure  of  an  invention  to  the 
other,  where  one  of  such  parties  is  shown  to  have  a  prac- 

106 


Ileal  knowledge  of  tile  art,  and  the  other  has  not,  a  strong 
presuniptioii  arises  that  the  one  having  such  practical 
knowledge  would  be  the  more  likely  to  have  conceived  the 
invention  (See  subject  Originality).  Alexander  v. 
Blachman,  26  App.  D.  C.  541,  121  0.  G.  1979  (1906)  ; 
Flather  v.  Wehcr,  21  App.  D.  C.  179,  104  0.  G.  312 
(1903);  Miller  v.  Kelley,  96  0.  G.  1038;  1901  C.  D. 
405,  18  App.  D.  C.  163. 

190.  Presumption  as  to  Originality — Following  the 
Line  of  Invention  of  Another.  Where  one  is  shown  to 
have  gained  his  knowledge  of  the  art  from  the  invention 
or  series  of  inventions  of  the  other  party,  and  a  dispute 
as  to  the  inventorship  of  a  specific  improvement  arises, 
both  parties  claiming  it,  a  question  of  veracity  is  pre- 
sented, and  under  such  circumstances,  to  determine  to 
whom  the  greater  weight  should  be  given,  the  presump- 
tion will  be  that  the  party  experienced  in  the  art  is  the 
more  likely  inventor.  French  v.  Ilolconil),  115  0.  G. 
506;  Scott  V.  Scott,  96  0.  G.  1650;  1901  C.  D.  419. 

And  where  there  is  an  issue  of  originality,  and  all  that 
one  of  the  parties  did  grew  out  of  and  was  dependent 
upon  the  disclosure  of  the  other  party,  the  presumption 
is  that  the  party  making  such  disclosure  was  the  in- 
ventor of  the  issue.  Granger  v.  Bichardson,  110  0.  G. 
722;  Scott  V.  Scott,  96  0.  G.  1650;  1901  C.  D.  419,  18 
xVpp.  D.  C.  420. 

191.  Irrelevant  Testimony.  Testimony  is  irrelevant 
when  it  has  no  bearing  on  the  matter  in  dispute,  does 
not  affect  the  subject  matter  of  the  controversy,  and  can 
in  no  way  assist  the  court  in  deciding  the  case.  The 
Court'  of  Appeals  D.  C.,  has  called  attention  to  the  fact 
that  the  practice  of  encumbering  the  record  in  inter- 
ference cases  with  irrelevant  matters  is  general,  and  has 
strongly  condemned  the  practice.  Connor  v.  Dean,  24 
App.  D.  C.  277,  142  0.  G.  856 ;  Scott  v.  Scott,  96  0.  G. 
1650 ;   1901  C.  D.  419,  18  App.  D.  C.  420. 

Testimony  to  show  non-patentability  of  the  issue  or  the 

107 


scope  of  the  issue,  is  irrelevant.  You  Keller  v.  Hay  den, 
et  al.,  173  0.  G.  285  (1911).  That  a  stranger  to  the 
record  made  the  invention  is  immaterial.  Steinmetz  v. 
Hewitt,  107  0.  G.  3972  (1903). 

191a.  Expert  Testimony.  It  is  not  the  practice  of  the 
office  to  permit  expert  testimony  to  explain  what  an  aj)- 
plication  discloses,  and  it  should  be  permitted  only  in 
very  exceptional  eases,  if  at  all.  Cooper  v.  Downing,  222 
0.  G.  727  (1915).  But  in  Hopkins  v.  Newman,  134  0.  G. 
2028,  30  App.  D.  C.  402,  such  testimony  was  considered. 
In  Cooper  v.  Downing.  230  0.  G.  909,  45  App.  D.-C.  345, 
it  was  held  that  the  Commissioner  properly  refused  to 
consider  evidence  of  what  was  intended  by  the  disclosure 
of  one  of  the  parties,  since  it  is  the  duty  of  the  office  ex- 
perts to  determine  what  an  application  discloses. 

191b.  Objections  to  Evidence.  A  party  who  desires 
to  oppose  the  admission  of  any  evidence  produced  or  of- 
fered by  his  opponent,  should  make  his  objection  and 
state  the  grounds  therefor  at  the  time  the  evidence  is  of- 
fered. If  he  fails  to  object  he  waives  his  right  to  have 
the  e^^dence  excluded.  He  should  also  be  considered  to 
have  waived  hisi  right  if  he  fails  to  state  a  legitimate 
ground  of  objection,  unless  there  is  a  stipulation  in  the 
record  that  he  may  afterward  state  the  grounds  of  ob- 
jection. All  objections,  whether  to  the  proceedings  or 
to  specific  evidence,  should  be  timely  made  in  order  that 
the  opposing  party  may  be  placed  on  his  guard.  Badger 
V.  Morgan,  117  0.  G.  598  (1905).  In  man}-  instances 
the  answer  of  the  witness  is  not  responsive  to  the  ques- 
tion, in  which  case  there  is  no  opportunity  to  object  to 
the  evidence  by  objecting  to  the  question,  since  the  ques- 
tion may  have  been  proper,  but  in  that  event  the  ag- 
grieved party  should  move  to  strike  out  the  answer,  or 
so  much  of  it  as  is  irresponsive  to  the  question. 

Form  of  Objection.  An  objection  should  be  positive 
and  sliould  state  wliat  principle  of  evidence  the  question, 
or  ail  answer  thereto,  would  violate.     A  general  objec- 

108 


tion,  such  as — that  the  evidence  is  inadmissible — ^would 
hardly  present  any  question  unless  the  evidence  is  such 
that  it  could  not  be  admissible  for  any  purpose  what- 
ever. If  objection  is  made  and  no  valid  ground  of  ob- 
jection is  stated,  it  will  not  be  available  to  exclude  the 
evidence  because  there  was  another  and  valid  ground  of 
objection  which  might  have  been  made  but  was  not.  It 
would  seem  tluit  objections  to  the  materiality  or  rele- 
vancy of  evidence  may  be  made  at  any  time,  for  a  party 
is  bound  to  know  whether  the  evidence  tends  to  prove  or 
disprove  an,y  issue  in  the  cause.  Furthermore  the  court 
will  not  decide  a  cause  upon  immaterial  or  irrelevant 
evidence,  because  if  it  is  immaterial  or  irrelevant  it  does 
not  prove  anything  in  relation  to  the  issue.  Wigmore's 
Ev.  Sec.  18. 

192.  Relevant  Testimony — What  Is.  In  an  interfer- 
ence the  ultimate  question  to  be  determined  is,  who  was 
the  prior  inventor  of  the  issue,  and  the  evidence  should 
be  confined  to  the  question  of  priority.  Brill  &  Adams 
V.  Uehelacher,  99  0.  G.  2966;  1902  C.  D.  220;  Trufant 
V.  Brindle,  etc.,  101  0.  G.  1608 ;  1902  C.  D.  397.  As  to 
what  facts  and  circumstances  have  a  tendency  to  prove 
priority  there  has  been  much  controversy.  The  Court 
of  Appeals  D.  C.  has  repeatedly  declared  that  it  would 
not  take  into  consideration,  in  interferences,  questions 
which  do  not  relate  to  priority.  Out  of  the  numerous 
questions  which  parties  to  interferences  have  attempted 
to  bring  before  that  court  on  appeal,  we  have  a  number 
of  decisions  defining  what  is  regarded  by  the  court  as 
material  to  the  determination  of  the  question  of  priority, 
or  what  facts  or  circumstances  may  be  introduced  to  es- 
tablish the  ultimate  fact  of  who,  as  between  the  parties, 
was  the  first  inventor  of  the  issue. 

Laches.  It  has  been  held  that  the  question  of  whether 
a  party  has  been  guilty  of  laches  is  one  proper  to  be 
determined  as  relating  to  priority.  Wintroath  v.  Chap- 
man, 248  0.  G.  1004,  47  App.  D.  C.  428. 

109 


Originality.  It  would  seem  to  be  obvious  that  tlie  ques- 
tion of  fact  as  to  whether  one  party  derived  his  knowl- 
edge of  the  invention  from  the  other  party,  is  one  which 
relates  to  priority.  3Iilton  v.  Kingsley,  7  App.  D.  C. 
531,  75  0.  G.  2193. 

Reduction  to  Practice.  Whether  a  partj^  reduced  an 
invention  to  practice  and  the  date  of  such  reduction  to 
practice,  relate  to  priority.  Stevens  v.  Seller,  11  App. 
D.  C.  245,  81  0.  G.  1932. 

The  court  has  also  considered  as  relating  to  priority 
the  following  questions:  Whether  the  evidence  shows  a 
lack  of  reasonable  diligence  on  the  part  of  one  of  the 
parties.  Paul  v.  Johnson,  23  App.  D.  C.  187,  109  0.  G. 
807 ;  Wickers  v.  McKee,  29  App.  D.  C.  4,  129  0.  G.  869. 
Whether  a  party  has  concealed  or  suppressed  his  inven- 
tion. Matthes  v.  Burt,  24  xVpp.  D.  C.  265,  111  0.  G. 
1363.  Whether  a  party  has  exercised  reasonable  dili- 
gence, where  diligence  is  required  of  him.  Yates  v. 
Huson,  8  App.  D.  C.  93,  74  0.  G.  1732.  AVhat  effect  the 
filing  dates  of  the  applications  shall  have  in  determining 
the  question  of  priority.  SJierivood  v.  Drewson,  29  App. 
D.  C.  161,  130  0.  G.  657.  Whether  one  party  was  acting 
as  the  agent  of  another  in  what  he  did  in  relation  to  the 
invention.  Milton  v.  Kingsley,  7  App.  D.  C.  531,  75  0. 
G.  2193 ;  Huel)el  v.  Bernard,  15  App.  D.  C.  510,  90  0.  G. 
751.  Whether  a  party  has  the  right  to  make  the  claims. 
Podelsack  v.  Mclnnerney,  26  App.  D.  C.  399,  120  0.  G. 
2127 ;  Wickers  v.  McKee,  29  App.  D.  C.  4, 120  0.  G.  869. 
Whether  one  of  the  parties  failed  to  disclose  the  inven- 
tion. Manley  v.  Williams,  168  0.  G.  1034,  37  App.  D.  C. 
194.  Whether  the  application  of  one  of  the  parties,  as 
originally  filed,  disclosed  the  invention  in  issue.  Mc- 
Knight  v.  PoJil,  130  0.  G.  2067  (1907),  30  App.  D.  C.  92. 
Wliether  a  party  is  a  joint  or  sole  inventor.  Lemp  v. 
Randall,  146  0.  G.  255,  35  App.  D.  C.  430.  Whether  the 
applications  had  been  altered  after  execution.  Lind- 
strom  V.  Ames,  168  0.  G.  250,  37  App.  D.  C.  365.    The 

110 


invalidity  of  an  oath  executed  before  a  notary  who  was 
the  attorne}'  for  the  applicant.  Dalton  v.  Wilson,  224  0. 
G.  741,  44  xVpp.  D.  C.  249,  and  whether  an  application 
was  abandoned  during  prosecution.  Kinsman  v.  Strohm, 
136  0.  G.  1769,  31  App.  D.  C.  581.  All  of  the  foregoing 
(|uest'ions  being  material  to  the  determination  of  priority, 
it  is  proper  to  introduce  evidence  thereon. 

193.  Rebuttal  Testimony.  The  word  rebutting  has  a 
two-fold  signification,  both  in  common  and  legal  par- 
lance. It  sometimes  means  contradictory  evidence  only. 
At  other  times  overcoming  testimony.  It  maj^  be  em- 
ploj'ed  as  contravening,  or  opposing,  as  well  as  over- 
coming proof.  Fain  v.  Cornett,  25  Ga.  184;  Words  & 
Phrases,  Vol.  7,  page  5987. 

The  part}^  on  whom  the  burden  of  proof  rests  is  re- 
quired to  produce  sufficient  evidence  to  sustain  his  case. 
The  defendant  meets  this  proof  hj  evidence  to  explain 
or  disprove  the  evidence  already  put  in.  10  Fed.  Cases 
No.  5452 ;  AcUin  v.  McCalmont  Oil  Co.,  201  Pa.  St.  257, 
50  Atl.  955. 

Where  a  party  anticipates  a  defense  and  puts  in  evi- 
dence which  he  is  not  required  to  put  in  in  chief,  and 
thereby  undertakes  to  meet  the  evidence  of  the  defendant 
before  it  is  produced,  he  can  not  thereafter  introduce 
cumulative  evidence  upon  the  same  subject,  as  rebuttal. 
York  V.  Pease,  2  Gray  (Mass.)  282.  Nor  can  a  party 
under  the  guise  of  rebuttal,  put  in  cumulative  evidence 
which  merely  goes  to  sustain  and  support  that  which  he 
has  introduced  to  sustain  his  original  case,  nor  evidence 
on  an  essential  point  which  he  failed  to  prove  in  his 
original  case.  Sivinglehurst  v.  Ballard,  265  0.  G.  459, 
258  Fed.  973 ;  KoJiler  v.  Wells-Fargo  &  Co.,  26  Cal.  606, 
613.  The  admission  or  rejection  of  evidence  offered  in 
rebuttal,  is  however,  a  matter  largely  in  the  discretion 
of  the  court,  the  circumstances  under  which  it  is  offered 
and  the  good  faith  of  the  party  being  taken  into  ac- 
count.   Enc.  of  Ev.  Vol.  10,  page  651. 

Ill 


"Where  a  junior  party  filed  interrogatories  in  rebuttal 
by  which  it  was  sought  to  prove  that  the  senior  party 
was  not  the  original  inventor,  it  was  held  that  the  testi- 
mony should  be  suppressed  because  it  constitutes  a  part 
of  the  junior  party's  original  case.  GolclscJimidt  & 
Weher  v.  Von  Schutz,  192  0.  G.  743  (1913).  Testimony 
taken  in  rebuttal  will  not  be  suppressed  on  motion  or  ob- 
jection of  the  defendant  upon  the  ground  that  it  was  not 
proper  rebuttal  after  the  defendant  has,  by  leave  of 
court,  taken  surrebuttal  testimony.  American  Bank 
Protection  Co.  v.  City  Nat.  Bank,  181  Fed.  375.  ' 

Where  a  senior  party  proved  dates  later  than  those  set 
up  in  his  preliminary  statement,  it  was  held  not  proper 
for  the  junior  party  to  make  out  a  different  prima  facie 
case  in  his  rebuttal  testimony.  Woodhridge  v.  Winship, 
21  Gour.  19-7  (Feb.,  1909). 

Where  one  party  fails  to  take  testimony  it  is  improper 
for  his  opponent  to  put  in  additional  testimony  as  re- 
buttal.   Kinsman  v.  StroJim,  125  0.  G.  1699  (1906). 

Kebuttal  testimony  relating  to  the  patentability  of  the 
issue  will  be  stricken  out  on  motion.  Parker  v.  Leivis, 
120  0.  G.  323  (1905). 

193a.  Surrebuttal  Evidence.  In  setting  dates  for  the 
taking  of  testimony,  no  provision  is  made  for  taking  sur- 
rebuttal testimony,  and  if  the  evidence  previously  pro- 
duced warrants  the  taking  of  surrebuttal  testimony,  the 
party  desiring  to  take  the  same  should  file  a  motion  for 
permission  to  do  so.  Whether  this  motion  shall  be  granted 
or  refused  is  a  matter  within  the  discretion  of  the  Ex- 
aminer of  Interferences.  The  privilege  of  taking  such 
testimony  will  b(!  extended  to  a  party  whenever  he  has 
been  surprised  by  evidence  or  a  line  of  defense  in  rebut- 
tal wliich  he  has  had  no  reason  to  anticipate  or  an  op- 
portunity to  prepare  against.  Donning  v.  Stackpole  and 
Lagankr,  106  0.  G.  264;  1903  C.  D.  298.  Such  motions 
have  been  denied  wherein  it  was  not  shown  that  the 
rebuttal   testimony  constituted  a  surprise.     Howard  v. 

n2 


Sparc,  21  Gour.  19-8  (Mar.,  1909);    Ruthven  v.  Christ- 
ensen,  138  0.  G.  257  (1908). 

In  Wigmore  on  Evidence,  Sec.  1874,  it  is  said:  "P^or 
the  opponent's  case  in  surrebuttal  there  remain  properly 
only  two  sorts  of  evidence,  namely,  evidence  explaining 
away  the  effect  of  new  facts  brought  forward  by  the 
proponent  in  rebuttal,  and  evidence  impeaching  the  wit- 
nesses testifying  in  rebuttal.  All  other  evidence  could 
and  should  have  been  put  in  in  reply.  Evidence  legiti- 
mately receivable  in  surrebuttal  would  be  evidence  im- 
peaching rebuttal  witnesses." 

SUPPRESSION  OF  TESTIMONY. 

194.  Motion  to  Suppress.  Where  a  part}'  desires  to 
suppress  certain  testimon}-,  he  may  make  a  motion  to 
suppress,  designating  the  parts  that  he  desires  to  have 
suppressed,  giving  the  grounds  for  such  suppression. 
The  motion  should  be  made  before  final  hearing  and  be- 
fore printing  of  the  record,  but  a  ruling  thereon  may, 
and  will  be  reserved  for  final  hearing  in  cases  where  a 
reading  of  the  record  would  be  required  for  the  Exam- 
iner of  Interferences  to  determine  whether  or  not  the 
testimony  should  be  suppressed.  The  motion  should  be 
noted  for  hearing  with  proof  of  service  upon  the  oppos- 
ing party.  Talhot  v.  Monell,  99  0.  G.  2965;  1902  C. 
D.  216;  Hall  V.  Alvord,  101  0.  G.  1833 ;  1902  C.  D.  418 ; 
Dyson  V.  Land,  etc.,  130  0.  G.  1690  (1907)  ;  Anclrcivs 
V.  Nilson,  111  0.  G.  1038;  Keith  v.  EricJiSon,  etc.,  157  0. 
G.  754  (1910). 

Whether  a  ruling  on  the  motion  should  be  reserved  for 
final  hearing  is  a  matter  within  the  discretion  of  the 
Examiner  of  Interferences.  Jiojjce  v.  Kempshall,  119  0. 
G.  338  (1905). 

Refusal  to  suppress  is  not  reversible  error.  Kcnipshall 
V.  Boyce,  129  0.  G.  3162. 

194a.  Retaking  Testimony.  A  party  may  be  per- 
mitted to  retake  his  testimony  where  an  irregularity  in 
10  113 


taking  the  same  arose  through  inadvertence  and  not 
through  any  desire  to  delay  the  proceedings  or  take  any 
unfair  advantage  over  the  opposing  party.  Where  a 
party  finds  that  he  has  not  taken  his  testimony  in  ac- 
cordance with  the  rules,  it  is  incumbent  on  him,  in  sup- 
port of  a  motion  to  retake  the  testimony,  to  show  wh}-  he 
failed  to  comply  with  the  rules  in  the  first  instance  and 
that  the  granting  of  the  motion  will  result  in  no  hard- 
ship to  his  opponent.  Jones  v.  Starr,  111  0.  G.  2221; 
Shaw  cO  Weltij  Shirt  Co.  v.  Qualcr  City  Shirt  Co.,  157 
O.  G.  1000  (1910)  :  Goodfellow  v.  Jolly,  111  O.'G.  1940. 
(See  Sec.  220.) 

The  granting  or  refusing  of  a  motion  to  retake  testi- 
mony is  a  matter  within  the  discretion  of  the  Examiner 
of  Interferences,  or  the  Commissioner  on  appeal,  and  the 
Court  of  Appeals,  D.  C  will  not  interfere  with  the  ex- 
ercise of  that  discretion.  Jones  v.  Starr,  1905  C.  D.  694, 
25  App.  D.  C.  529. 

Since  the  primary  reason  for  refusing  a  motion  to  re- 
take testimony  is  the  expense,  inconvenience  or  disad- 
vantage it  might  impose  upon  the  opposing  party,  it 
would  seem  that  the  Examiner  of  Interferences  or  the 
Commissioner  might  properly  impose  conditions  upon 
which  the  mo^'ing  party  would  be  permitted  to  retake 
the  testimony.  The  moving  party  .should  act  promptly 
upon  discovery  of  the  necessity  to  retake  his  testimony, 
to  the  end  that  his  opponent  be  not  delayed,  incon- 
venienced or  put  to  a  disadvantage  other  than  such  as 
would  necessarily  result  when  the  moving  party  is  acting 
in  good  faith  and  with  as  much  promptitude  as  the  cir- 
cumstances will  permit. 

195.  Grounds  for  Suppression.  The  following  facts 
and  circum.stanres  may  be  valid  grounds  for  siippressing 
testimony.  That  the  interrogatories  are  not  proper  re- 
buttal. Gohlschmidt  d-  Weber  v.  Von  Schviz,  192  0.  G. 
743  (1913)  ;  that  the  testimony  relates  solely  to  the 
patentability  of  the  counts  and  the  state  of  tlie  prior  art. 

114 


Felbel  v.  Oliver,  13  Gour.  4-11  (Jan.,  1901)  ;  Dixon  & 
Marsh  v.  Graces,  etc.,  127  0.  G.  1993  (1907)  ;  that  tlie 
testimony  was  not  taken  in  accordance  with  the  rules. 
Blackman  v.  Alexander,  98  0.  G.  1281 ;  1902  C.  D.  41 ; 
that  the  notary's  certificate  is  defective  in  that  it  does 
not  certify  that  the  depositions  were  read  by  or  to  the 
witnesses  before  signing  and  that  the  notary  did  not 
seal  the  depositions  and  forward  them  to  the  office. 
Blackman  v.  Alexander,  98  0.  G.  1281 :  1902  C.  D.  41 ; 
or  failure  to  certify  the  date  on  which  the  package  was 
sealed,  or  the  name  of  the  person  who  transcribed  the 
stenographer's  notes,  or  that  they  were  written  out  in 
presence  of  the  notary,  or  that  the  notary  failed  to  for- 
ward the  exhibits  to  the  office,  in  the  absence  of  a  stipu- 
lation that  they  may  be  retained  by  counsel.  Rolfe  v. 
Taylor,  111  0.  G.  1938;  that  the  depositions  were  taken 
without  proper  notice.    Potter  ik  Oclis,  95  0.  G.  1049 ; 

1901  C.  D.  39 ;  that  a  party  served  notice  to  take  testi- 
mony and  failed  to  appear  and  subsequently  served  an- 
other notice  and  took  the  testimon}-.  Denton  v.  Burn- 
ham,  18  Gour.  83-11  (Nov.,  1906)  ;  that  the  cross-exam- 
ination sought  to  be  stricken  out  is  not  proper  cross- 
examination;  Marconi  v.  Shoemaker,  etc.,  121  0.  G. 
2664  (1906)  ;  that  the  testimony  is  not  proper  rebuttal; 
Kinsman  v.  Strohm,  125  0.  G.  1699  (1906),  135  0.  G. 
1121  (1908)  ;  that  a  party  was  not  given  an  opportunity 
to  cross-examine  tlie  witnesses;  Mnnster  v.  Ainsivorth, 
128  0.  G.  2085  (1906),  128  0.  G.  2088;  Mattice  v.  Lang- 
worthy,  140  0.  G.  507  (1909)  ;  that  the  testimony  relates 
solely  to  public  use ;    Stroud  v.  Miller,  101  0.  G.  2075 ; 

1902  C.  D.  423 ;  that  corrections  and  additions  were 
made  long  after  tlie  testimony  was  taken  and  without 
notice  to  the  moving  party.  Independent  Baking  Pow- 
der Co.  V.  Fidelity  Mfg.  Co.,  94  0.  G.  222;  1901  C.  D.  7. 

196.  Grounds  Insufficient.  The  fact  that  the  notary 
did  not  write  the  names  of  tlie  witnesses  at  the  top  of 
each  page,  is  not  sufficient  grounds  for  suppression  of  a 

115 


deposition;  Rolfe  v.  Taylor,  111  0.  G.  1938;  nor  that 
the  notary  delayed  filing  the  testimony,  where  such  delay 
is  properly  explained ;  Moss  v.  Blaisdell,  113  0.  G.  2505  ; 
nor  that  certain  words  in  the  printed  record  are  itali- 
cized ;  Faller  v.  Lorimer,  16  Gour.  37-11 ;  nor  that  the 
testimony  was  adduced  by  leading  questions,  though  tes- 
timony adduced  by  leading  questions  will  be  critically 
scanned;  Smith  v.  Brooks,  112  0.  G.  953;  nor  that  the 
notary  acted  out  of  his  jurisdiction,  no  objection  being 
made  at  the  time  the  testimonj^  was  taken ;  Badger  v. 
Morgan,  etc.,  117  0.  G.  598  (1905)  ;  nor  the  fact  that 
the  notary  was  in  the  employ  of  the  attorney  for  the  op- 
posing party,  where  no  objection  was  made  on  that 
ground  at  the  time  the  testimony  was  taken;  Royce  v. 
Kempshall,  117  0.  G.  2090 ;  nor  that  the  notary  failed  to 
certif}^  whether  one  of  the  parties  was  present  in  person 
or  by  attorney;  Royce  v.  Kempshall,  117  0.  G.  2090; 
nor  that  a  party  refused  to  produce  or  introduce  in  evi- 
dence certain  books  about  which  he  testified  for  the  pur- 
pose of  refreshing  his  recollection,  where  it  appears  that 
he  offered  the  same  to  opposing  counsel  for  inspection 
at  the  time  he  testified.  Bay  State  Belting  Co.  v.  Kclton 
Bruce  Mfg.  Co.,  127  0.  C.  1580  (1907)  ;  nor  that  a  cer- 
tain witness  was  not  named  in  the  notice.  Keith,  etc.  v. 
Lundquist,  etc.,  156  0.  G.  798  (1910). 

197.  Suppressed  Testimony — How  Retained  in  the  Rec- 
ord. When  testimony  is  stricken  out  on  motion  in  an 
interference  proceeding,  that  part  which  is  cancelled 
should  be  shown  by  red  lines  and  proper  marginal  notes, 
as  when  matter  is  cancelled  in  a  specification  of  an  ap- 
plication for  a  patent.  When  the  record  is  printed,  that 
portion  which  is  stricken  out  should  not  be  printed  in 
the  body  of  the  testimony,  but  notice  should  be  inserted 
in  the  printed  record  that  certain  questions  and  answers 
or  other  evidence  was  stricken  out,  giving  the  date  of  the 
decision  or  order  striking  it  out.  The  party  whose  tes- 
timony has  been  stricken  out  may  print  the  parts  stricken 

116 


out  as  an  appendix  to  his  record.  Marconi  v.  Shoemaker, 
etc.,  121  0.  G.  2664  (1906). 

In  an  infringement  suit,  a  part}^  may  move  to  strike 
out  or  he  may  insist  upon  his  objections  at  the  hearing. 
In  either  event  the  matter  stricken  out  remains  in  the 
record  for  the  purposes  of  appeal.  Blease  v.  Garlington, 
92  U.  S.  1;  Nelsoji  v.  V.  S.,  201  U.  S.  92,  114;  Woljf 
Truck  Frame  Co.  v.  American  Steel  Foundries,  195  Fed. 
940,  946.  However,  it  was  held  in  Felbel  v.  Oliver,  100 
0.  G.  1975 ;  1902  C.  D.  309,  that  where  a  party  prints 
in  his  record  depositions  which  have  been  suppressed, 
such  depositions  will  be  expugned  upon  motion. 

198.  Testimony  Taken  in  Another  Interference — As 
Evidence.  Rule  157  provides  that  testimony  taken  in  an 
interference  proceeding  may  be  used  in  any  other  or  sub- 
sequent interference  proceeding,  so  far  as  relevant  and 
material,  subject  to  the  right  of  the  contesting  party  to 
recall  the  witnesses  whose  testimony  has  been  taken  and 
to  take  other  testimony  in  rebuttal  of  the  same. 

For  "What  Purpose  Material  or  Relevant.  Testimony 
taken  in  another  interference  may  be  introduced  for  the 
purpose  of  discrediting  or  impeaching  the  testimom'  of 
the  witness  in  a  later  interference.  This  is  upon  the  well 
established  principle  of  evidence  that  the  testimony  of  a 
witness  may  be  discredited  or  impeached  by  showing 
declarations  made  at  other  times  and  places  by  the  same 
witness  relating  to  the  same  subject  which  are  not  con- 
sistent with  his  later  testimony  or  are  contradictory 
thereof.  TalUtt  v.  Monell,  99  0.  G.  2965 ;  1902  C.  D. 
217;  Heivitt  V.  Weintrauh,  134  0.  G.  1561  (1908).  Such 
testimony  may  also  be  introduced  where  the  issues  in 
the  interferences  are  substantially  the  same  and  the 
parties  are  the  same  and  the  provisions  of  Rule  157  are 
otherwise  complied  with  and  a  proper  showing  made. 
It  is  for  the  office  to  determine  whether  the  circumstances 
are  such  as  to  permit  the  use  of  such  testimony.  This 
rule  is  similar  to  the  rules  of  evidence  in  the  trial  of 

117 


causes  in  court.  In  Clow  v.  Baker,  ct  al.,  36  Fed.  692, 
the  court  said:  "To  prevent  a  failure  of  justice  that 
might  result,  it  is  permissible  for  the  court,  when  cause 
is  shown  therefor,  to  permit  the  depositions  taken  in  one' 
case  to  be  read  on  the  trial  of  another,  if  it  appears  that 
the  parties  to  the  later  case  were  the  parties  or  privies 
with  the  parties  to  the  former  suit ;  that  the  issues  upon 
which  the  testimony  was  taken  are  substantially  the 
same ;  and  that  every  opportunity  for  thorough  exam- 
ination and  cross-examination  was  afforded  both  .parties 
when  the  testimony  was  taken.  Kenny  &  Thordarson  v. 
O'Connell,  et  al,  117  0.  G.  1163  (1905)  ;  Beall  v.  Lyon, 
127  0.  G.  3215  (1907)  ;  StrauNe  v.  Young,  119  0.  G. 
338  (1905). 

199.  The  Hearing.  The  extent  to  which  the  Exam- 
iner of  Interferences  will  grant  a  hearing  or  re-hearing 
of  a  case,  is  a  matter  ordinarily  within  his  discretion. 
Dunlap  V.  Crcveling,  etc.,  160  0.  G.  774  (1910). 

200.  Postponement  of  Final  Hearing.  It  is  within  the 
discretion  of  the  Examiner  of  Interferences  and  the  Com- 
missioner to  extend  the  time  for  final  hearing.  Dunkley 
V.  Beekhuis,  158  0.  G.  886  (1910).  But  a  postponement 
will  not  be  granted  to  permit  a  party  to  intervene.  In 
re  ColumMan  Carhide  Co.,  20  Gour.  17-1  (March  27, 
1908). 

201.  Admissions  Made  by  Counsel  at  Hearing.  Ad- 
missions made  by  counsel  at  or  before  final  hearing  are 
binding  upon  his  client.  Horton  v.  Zimmer,  32  App. 
D.  C.  217,  137  0.  G.  2233  (1908)  ;  Mortimer  v.  TJiomas, 
etc.,  192  0.  G.  215  (1913). 

No  Hearing  After  Expiration  of  Limit  of  Appeal.  Rule 
126  does  not  i)rovide  for  a  hearing  before  the  Commis- 
sioner, and  no  hearing  will  be  granted  after  the  expira- 
tion of  the  limit  of  appeal  to  an  applicant  whose  claims 
are  found  unpatentable  by  the  Board  of  Examiners  in 
Chief  in  consideration  of  the  claim  in  connection  with 
the  question  of  priority.    Holtz  v.  Hewitt,  127  0.  G.  1992 

118 


.(1907).  Tlie  len^lli  of  lime  wliieli  will  be  granted  for 
a  heariii"'  is  withiji  the  diseretioii  of  the  Examiner  of  In- 
terferences. Moore  v.  (Uirlis,  320  0.  G.  324  (1905); 
Cazin  v.  Yon  Welsliharh,  119  O.  (i.  650  (1905). 

202.  Petition  to  Restore  Jurisdiction.  A  petition  to 
restore  jiirisdictioi!  to  the  Examiner  of  Interferences  will 
not  be  set  down  for  hearing,  bnt  briefs  may  be  filed. 
Adams  v.  EaiidaU,  125  ().  (i.  1700  (1906). 

203.  Judgment  Without  a  Hearing — Disclaimer. 
Where  there  is  a  disclaimer  filed  the  Examiner  of  Inter- 
ferences will  render  judgment  of  priority  without  setting 
a  date  for  hearing.  Toivnscnd  v.  Corey,  119  0.  G.  2237 
(1905). 

204.  Questions  Raised  But  Not  Argued.  Where  a 
l^arty  moves  to  dissolve  upon  all  grounds  mentioned  in 
Rule  122,  but  only  argues  part  of  them,  judgment  will 
be  rendered  against  him  on  the  grounds  not  argued. 
Harnish  v.  Gueniffet,  et  al.,  117  0.  G.  1492  (1905). 

205.  Statements  of  Examiner  of  Interferences  Made  at 
Hearing — When  Not  Reviewable  on  Appeal.  Where  the 
Examiner  of  Interferences  makes  a  statement  as  to  ad- 
missions and  waivers  of  counsel  at  a  hearing,  error  there- 
in, if  any,  will  not  be  reviewed  on  appeal  unless  there 
was  a  motion  for  a  re-hearing  presented  to  the  Examiner 
of  Interferences  and  ruled  upon.  Hansel  v.  Wardwell, 
116  0.  G.  2008  (1905). 

206.  Hearing  on  Motion  to  Dissolve — New  Grounds  and 
Notice.  Patents  referred  to  by  one  of  the  parties  which 
are  not  of  record  and  have  not  been  served  upon  the  op- 
posing party  at  least  five  daj's  before  the  hearing  will 
not  be  considered  on  motion  to  dissolve  unless  service  is 
waived  by  the  opposing  party.  Young  v.  Eick,  113  0.  G. 
547;  Lake  v.  Cahill,  110  0.  G.  2235;  Wells  v.  Packer, 
1900  C.  D.  35,  90  0.  G.  1947;  Whitlock  &  Hnson  v. 
Scott,  99  0.  G.  1385 ;   1902  C.  D.  166. 

What  Will  Be  Considered  on  Motion  to  Dissolve.  Noth- 
ing can  be  considered   which  is  not  contained  in  the 

119 


record  of  the  ease  unless  timely  notice  (five  days  before 
the  hearing)  of  such  matter  is  served  upon  the  opposing 
party.    Summers  v.  Hart,  98  0.  G.  2585 ;   1902  C.  D.  104. 

207.  Notice  of  New  Matter — Postponement  of  Hearing 
to  Give.  Upon  a  proper  showing  of  facts  that  the  new 
matter  could  not  have  been  earlier  discovered,  a  post- 
ponement of  the  hearing  will  be  granted  to  enable  a 
party  to  give  the  proper  notice.  Summers  v.  Hart,  98 
0.  G.  2585;    1902  C.  D.  104. 

JURISDICTION. 

208.  Jurisdiction  of  Examiner  of  Interferences.  The 
Examiner  of  Interferences  has  jurisdiction  to  determine 
questions  of  priority  and  all  matters  which  relate  to  the 
question  of  priority,  but  not  to  dissolve  an  interference. 
Brodwell  v.  Long,  21  Gour.  2-5  (Dec,  1908).  Where 
jurisdiction  by  the  Primary  Examiner  is  desired,  it  can 
only  be  obtained  by  the  order  of  the  Commissioner  and 
the  Primary  Examiner  should  make  his  request  of  the 
Commissioner.  Hildreth,  97  0.  G.  1374;  1901  C.  D.  186. 
He  has  not  jurisdiction  to  grant  amendments  to  appli- 
cations. Moore  v.  Heivitt,  115  0.  G.  509.  Nor  to  require 
the  filing  of  a  new  oath.  Dukcsmith  v.  Carrington  v. 
Turner,  125  0.  G.  348  (190C). 

209.  Jurisdiction  of  Examiners  in  Chief.  The  Exam- 
iners in  Chief  have  appellate  jurisdiction  in  all  matters 
properly'  brought  before  them  on  appeal,  but  have  no 
jurisdiction  to  extend  the  time  within  which  such  appeal 
may  be  taken.  Blackmail  v.  Alexander,  105  0.  G.  2059 
(HK)3). 

210.  Jurisdiction  of  Commissioner  Pending  Appeal  to 
Court  of  Appeals.  The  (lonnnissioner  of  Patents  has  jur- 
isdiction pending  an  appeal  to  the  Court  of  Appeals  to 
hear  and  determine  a  motion  to  reopen  a  case  for  the 
purpose  of  taking  additional  testimony.  Clement  v. 
i:ir hards.  He,  111  0.  G.  1627. 

211.  Jurisdiction  of  Courts  Over  Witnesses  in  Inter- 

120 


ferences.  When  a  witness  goes  upon  the  stand  in  an  in- 
terference ease  he  submits  to  the  jurisdiction  of  the  U, 
S.  District  Court  in  the  district  in  which  he  testifies 
and  remains  under  that  jurisdiction  until  his  cross- 
examiiuitiou  is  couchided.  Lohel  v.  Cossey,  157  Fed.  664, 
666. 

212.  Restoring  Jurisdiction — Petition  For.  When  it 
is  desired  to  restoi'c  jurisdiction  of  the  Examiner  of  In- 
terferences to  consider  certain  motions,  copies  of  the  mo- 
tions which  the  petitioner  desires  the  Examiner  of  In- 
terferences to  consider  and  decide  shoidd  accompany  the 
petition,  and  service  of  the  papers  shouki  be  made  on 
the  opposite  party.  The  petition  shouki  be  addressed 
to  the  Commissioner,  but  the  Commissioner  will  not  pass 
upon  the  merits  of  the  motion  but  merely  upon  the  form 
of  it.    Adams  v.  Randall,  125  0.  G.  1700  (1906). 

Restoring  Jurisdiction  After  Limit  of  Appeal.  Even 
after  the  limit  of  appeal  has  expired  upon  a  judgment 
against  the  moving  party,  a  motion  to  restore  the  juris- 
diction of  the  Examiner  of  Interferences  to  hear  a  mo- 
tion to  reopen  the  case,  may  be  granted  upon  proper 
showing.  Upscomh  v.  Pfelffer,  122  Q.  G.  351  (1906). 
After  time  for  appeal  has  expired  the  Commissioner  has 
sole  power  to  restore  jurisdiction.  Hough  v.  Gordon, 
108  0.  G.  797. 

Restoring  Jurisdiction  Pending  Appeal.  Though  an  ap- 
peal is  pending  before  the  Examiners  in  Chief  on  the 
question  of  priority,  the  jurisdiction  of  the  Examiner 
of  Interferences  may  be  restored  to  consider  a  motion  to 
reopen  the  case  to  offer  newly  discovered  evidence.  New- 
ell V.  Clifford  V.  Rose,  122  0.  G.  730  (1905)  ;  Dimhar  v. 
Schdlengcr,  118  0.  G.  2536  (1905). 

Restoring  Jurisdiction  to  Hear  Motions  to  Dissolve. 
Under  the  former  rules  motions  to  transmit  motions  to 
dissolve  were  heard  by  the  Examiner  of  Interferences, 
but  under  the  present  practice  such  motions  to  trans- 
mit are  heard  first  by  the  Commissioner  and  if  in  his 

121 


opinion  sucli  motion  should  be  transmitted  it  is  so  or- 
dered and  the  motion  then  goes  to  the  Law  Examiner  in- 
stead of  the  Primary  Examiner.  Under  the  present 
rules  the  motions  are  heard  by  different  officials  than 
formerly  heard  such  motions,  l)ut  the  time  for  making 
such  motions  and  the  character  of  showing  required  are 
not  changed  and  the  old  decisions  may  therefore  be  im- 
portant guides  as  to  the  practice. 

Where  a  party  fails  to  make  a  motion  to  dissolve  under 
Rule  122  within  the  time  provided,  but  waits  until- testi- 
mony lias  been  taken  and  judgment  has  been  rendered 
on  priority,  the  jurisdiction  of  the  Examiner  of  Inter- 
ferences will  not  be  restored  to  consider  a  motion  to 
transmit  a  motion  to  dissolve.  Fessenden  v.  Potter,  101 
0.  G.  2823;  1902  C.  D.  466.  While  under  the  present 
rules  the  Examiner  of  Interferences  does  not  have  jur- 
isdiction of  motions  to  transmit  motions  to  dissolve,  still 
a  similar  question  might  arise  under  the  present  rules 
where  the  motion  to  transmit  is  heard  by  the  Commis- 
sioner. 

213.  Rehearing's.  The  various  tribunals  of  the  Patent 
Office  stand  upon  the  same  footing  respecting  their  judg- 
ments and  decisions  as  do  the  courts.  In  Donning  v. 
Fisher,  125  0.  G.  2765  (1906),  it  was  said:  "A  court 
has  control  over  its  own  judgments  and  decrees  during 
the  term  at  which  they  were  rendered  and  may  at  any 
time  before  the  expiration  of  the  term,  in  the  exercise 
of  its  discretion,  open,  amend,  correct,  revise,  vacate,  or 
supplement  any  judgment  or  decree  rendered  during 
such  term.  The  tribunals  of  the  Patent  Office  have  this 
power  over  their  judgments  within  the  limits  of  appeal. 
They  also  have  the  power  in  analogy  to  the  practice  of 
the  courts,  of  requesting  a  rehearing  of  any  point  upon 
which  they  desire  further  light.  The  granting  of  a  re- 
hearing or  refusal  to  grant  the  same  arc  matters  within 
the  discretion  of  the  tribunal  having  jurisdiction  of  the 
case  at  the  time. ' ' 

122 


In  Rohinsoii  v.  Townscnd  v.  Copeland,  106  0.  G.  997, 
a  luotioji  was  filed  before  the  Commissioner  to  suspend 
proeeeding's  in  the  interference  and  remand  tlie  same  to 
the  Examiner  of -interferences  to  hear  and  determine  a 
motion  to  reopen  the  interference  for  the  purpose  of  in- 
troducing newly  discovered  evidence.  At  the  time  the 
motion  was  brought,  decisions  had  been  rendered  by  the 
Examiner  of  Interferences  and  by  the  Examiners  in 
Chief  on  the  question  of  priority'  and  at  the  time  this 
motion  was  brought  one  of  the  parties  had  appealed  to 
the  Commissioner.  It  was  therefore  held  that  there  was 
no  necessit.y  of  snspending  proceedings,  since  there  was 
no  limit  of  appeal  running  against  any  of  the  parties, 
but  the  hearing  on  the  appeal  was  continned  until  the 
final  determination  of  the  motion.  It  was  further  held 
that  the  motion  to  open  the  case  for  further  testimony 
should  be  heard  in  the  first  instance  b}^  the  Examiner  of 
Interferences  and  therefore  the  motion  to  transmit  the 
motion  to  reopen,  to  the  Examiner  of  Interferences,  was 
granted. 

214.  When  Motion  May  Be  Brought.  A  motion  for 
rehearing  maj^  be  brovight  at  any  time  before  the  expira- 
tion of  the  time  fixed  for  appeal  and  the  motion  may  be 
heard  and  decided  after  the  limit  of  appeal  has  expired. 
The  filing  of  the  motion  does  not  stay  the  running  of 
the  limit  of  appeal  and  if  a  party  desires  to  appeal  he 
must  do  so  within  the  limit  of  appeal  notwithstanding 
his  motion  for  a  rehearing.  Naulty  v.  Cutler,  126  0.  G. 
389  (1907). 

215.  Appeal.  There  is  no  appeal  from  a  decision 
denying  a  motion  for  a  rehearing,  though  the  right  to  a 
rehearing  maj"  be  considered  on  appeal  on  the  entire 
record.  Macey  v.  Laning  v.  Casler,  101  0.  G.  1608 ; 
Cannichael  v.  Fox,  104  0.  G.  1656;  Cole  v.  Zarbock  v. 
Green,  116  0.  G.  1451 ;  Hewitt  v.  Thomas,  etc.,  122  0.  G. 
1045.    Approved  in  Naulti/  v.  Cutler,  126  0.  G.  389. 

216.  Newly  Discovered  Evidence  as  Ground  for  Re- 

123 


hearing.  "Where  the  ground  upon  which  a  rehearing  is 
sought  is  newly  discovered  e\'idence,  the  motion  miLst 
show  that  the  evidence  sought  to  be  introduced  was  not 
known  at  the  time  the  original  testimony  was  taken  and 
could  not  have  been  discovered  at  that  time  by  the  exer- 
cise of  reasonable  diligence.  Mosher  v.  TuUif  <£■  Clark, 
99  0.  G.  2968 ;  1902  C.  D.  224 ;  Dudley  v.  Blickinsder- 
fer,  etc.,  99  0.  G.  228:  1902  C.  D.  119:  Latshaw  v.  Duff 
V.  Kaplan,  130  0.  G.  980  (1907). 

The  motion  must  also  show  what  the  newly  discovered 
evidence  consists  of ;  that  is,  if  it  is  the  testimony  of  vrit- 
nesses,  what  the  witnesses  will  testify  to:  if  exhibits, 
what  the  exhibits  are  that  will  be  introduced  in  evi- 
dence; that  the  evidence  is  material,  and  that  the  mov- 
ing party  was  diligent  in  bringing  the  motion.  Robin- 
son V.  Townsend  v.  Copeland,  100  0.  G.  683 :  1902  C.  D. 
263;  Allis  v.  Stoicell,  85  Fed.  481;  Parker  v.  Spoon,  14 
Gout.  19-8  (AprU,  1902) ;  Crescent  Oil  Co.  v.  W.  C.  Rob- 
inson &  Son  Co.,  142  0.  G.  1113  (1909). 

It  must  also  be  shown  that  the  newly  discovered  evi- 
dence is  of  such  character  that  the  establishment  of  the 
facts  alleged  would  likely  result  in  a  change  or  modifica- 
tion of  the  decision.  French  v.  Halcomb,  110  0.  G.  1727; 
Ball  V.  Flora,  117  0.  G.  2088  (1905)  ;  St  ruble  v.  Toung, 
etc.,  139  0.  G.  729  (1909). 

It  must  also  appear  that  due  diligence  was  exercised  in 
presenting  the  motion.  Beckert  v.  Currier,  104  0.  G. 
2439  (1903)  ;  Xeivell  v.  Clifford  v.  Rose,  125  0.  G.  665 
(1906)  ;  Claussen  v.  Dunbar,  etc..  129  0.  G.  2499 
(1907);  Townsend  v.  Thullen,  21  Gour.  37-12  ^May, 
1909).  A  delay  of  two  weeks  held  not  unreasonable. 
Robinson  v.  Townsend  v.  Copeland,  107  0.  G.  1376. 

217.  By  Whom  the  Motion  Shall  Be  Heard.  The  mo- 
tion mu.st  be  heard  in  the  fir.st  instance  by  the  Examiner 
of  Interferences  and  where  the  cause  has  passed  out  of 
his  jurisdiction,  there  must  be  a  motion  to  restore  his 
juri.sdiction.    Bon-fn  v.  Bradley,  58  0.  G.  386;  Robinson 

124 


V.  ToivHseml  v.  Copeland,  106  0.  G.  997  (1903)  ;  Cle- 
ment V.  Bichards,  etc.,  Ill  0.  G.  1626;  Dunbar  v.  Schel- 
lenger,  19  Goiir.  37-17  (April,  1907)  ;  liolfe  v.  Leepcr, 
159  0.  G.  991  (1910).  Can  not  be  granted  by  the  Court 
of  Appeals  D.  C.  DeFerranti  v.  Lindmark,  32  App.  D. 
C.  6,  137  0.  G.  733  (1908).  A  motion  to  transmit  a  mo- 
tion to  take  further  testimony,  made  pending  an  appeal 
to  the  Court  of  Appeals,  will  be  granted  upon  a  proper 
showing.  Clements  v.  Richards  v.  Meissner,  111  0.  G. 
1626. 

Official  Request  for  Rehearing.  Where  the  request  is 
made  by  the  tribunal  before  whom  the  case  was  previous- 
ly heard,  it  will  be  granted  jurisdiction.  Bettendorf,  17 
Gour.  41-22  (May,  1905). 

218.  Insufficient  Grounds  for  Rehearing.  There  is  no 
sufficient  ground  for  a  rehearing  where  there  is  an  ab- 
sence of  a  showing  why  the  evidence  was  not  produced 
when  the  testimony  was  originally  taken.  Mosler  v. 
Tully  &  Clark,  99*  0.  G.  2968 ;  1902  C.  D.  224.  Or 
where  the  evidence  sought  to  be  introduced  is  immate- 
rial, or  relates  wholly  to  expert  testimony.  Robinson  v. 
Townsend  v.  Co^peland,  107  0.  G.  1376  (1903).  Or 
where  the  showing  is  merely  that  a  party  failed  to  pro- 
duce his  best  evidence,  or  the  object  is  merely  to  strength- 
en the  testimony  already  in  the  record.  Sutton  v.  Mc- 
Donald, etc.,  98  0.  G.  1418 ;  1902  C.  D.  47 ;  Harris  v. 
Stern  &  Lotz,  101  0.  G.  1132 ;  1902  C.  D.  386.  Or  where 
the  purpose  is  to  explain  certain  exhibits  which  are  in 
evidence.  Blackman  v.  Alexander,  104  0.  G.  2441 
(1903).  Or  where  it  appears  that  the  evidence  is  unim- 
portant or  could  have  been  discovered  by  the  exercise  of 
reasonable  diligence.  Shaffer  v.  Dolan,  100  0.  G.  3012 ; 
1902  C.  D.  344.  Or  where  a  party  failed  to  produce  the 
evidence  because  he  did  not  regard  it  as  material.  Rob- 
erts I'.  Bachelle,  101  0.  G.  1831;  1902  C.  D.  415.  Or 
that  a  party  did  not  recall  certain  facts  at  the  time  his 
testimony  was  taken.     French  v.  Halcomb,  110  0.  G, 

125 


1727.  Or  where  it  appears  that  a  party  knew  of  the 
evidence  but  did  not  introduce  it  because  of  the  expense 
which  he  would  have  had  to  incur  in  securing  it.  Or  enter 
V.  Mathieu,  111  0.  G.  582.  Or  where  the  proposed  evi- 
dence relates  solely  to  a  statutory  bar.  Ritter  v.  Krakau 
&  Conner,  108  0.  G.  1050.  Or  where  the  evidence  relates 
to  the  right  of  a  party  to  make  the  claims  and  not  to 
priority.  Oshorn  v.  Austin,  115  0.  G.  1065.  Or  where 
it  is  based  on  the  fact  that  a  party  misjudged  her  ability 
to  prove  her  case  and  for  that  reason  took  no  testimony. 
Hidl  V.  McGill,  117  0.  G.  597.  Nor  is  the  fact  that  one 
of  the  witnesses  of  a  party  was  sick,  another  was  hostile 
and  another  was  out  of  town  at  the  time  the  original 
testimony  was  taken,  sufficient  ground  for  rehearing, 
though  such  facts  fnay  have  been  sufficient  to  support  a 
motion  or  extension  of  time  for  taking  testimony.  Newell 
V.  Clifford  V.  Rose,  125  0.  G.  665  (1906).  Or  where  the 
purpose  is  merely  to  introduce  an  earlier  application. 
Cutler  V.  Hall,  135  0.  G.  M9  (1908).  Or  where  it  ap- 
pears that  the  testimony  was  improperly  taken  as  rebut- 
tal and  thereafter  stricken  out.  McNeil  v.  Stephenson, 
192  0.  G.  517  (1913).  Or  where  the  testimony  was 
known  and  available  when  the  original  testimony  was 
taken.    Wehher  v.  Wood,  184  0.  G.  553  (1912). 

219.  Stay  of  Proceeding's.  A  motion  for  rehearing 
does  not  of  itself  operate  as  a  stay  of  proceedings.  Char- 
michael  v.  Fox,  104  0.  G.  1656  (1903).  Nor  stay  the 
running  of  time  for  appeal.  Naulty  v.  Cutler,  126  0.  G. 
389  (1907).  If  future  proceedings  require  that  a  party 
take  some  action  before  his  motion  for  rehearing  can  be 
hoard,  and  the  proceedings  are  such  as  may  be  suspended, 
a  motion  to  suspend  proceedings  should  be  made.  Roh- 
inson  v.  Towusend  v.  Copehind,  106  0.  G.  997. 

220.  Suppression  of  Testimony — Rehearing.  Where 
testimony  is  suppressed  because  of  irregularities  in  tak- 
ing thereof  due  entirel.y  to  inadvertence  and  not  inten- 
tion to  delay  proceedings,  the  party  should  be  given  an 

126 


opportunity  to  retake  the  testimony.  Blackman  v.  Alex- 
ander, 100  0.  G.  2383 ;  1902  C.  D.  323.  But  wliere  testi- 
mony is  improperly  taken  as  rebuttal  and  due  notice  is 
given  that  a  motion  will  be  presented  to  suppress  the 
same,  the  case  will  not  be  reopened  to  take  such  testi- 
mony.   McNeil  V.  Stephenson,  192  0.  G.  517  (1913). 

221.  Motion  to  Dissolve — Rehearnig.  A  party  may 
obtain  a  reconsideration  of  a  motion  to  dissolve  by  show- 
ing good  cause  which  justifies  a  rehearing.  Newcomh  v. 
Lemp,  110  0.  G.  307.  But  where  a  party  fails  to  cite  all 
the  references  which  he  might  have  cited  on  his  motion 
to  dissolve,  such  failure  does  not  entitle  him  to  a  re- 
hearing. White  V.  Powell,  160  0.  G.  776  (1910).  Where 
a  motion  to  dissolve  on  the  ground  that  a  party  has  no 
right  to  make  the  claims  was  not  presented  at  the  proper 
time,  but  after  all  the  testimony  had  been  taken,  the  case 
will  not  be  reopened  to  consider  such  motion  or  a  motion 
for  permission  to  take  testimony  as  to  the  operativeness 
of  an  opponent's  device.  Broadwell  v.  Long,  164  0.  G. 
252. 

222.  Second  Interference  Improperly  Declared — Re- 
hearing of  First  Interference.  Where  a  second  interfer- 
ence was  improperly  declared,  the  first  interference  will 
not  be  reheard  for  the  purpose  of  including  the  issue  in 
the  second  interference.  We7ide  v.  Horine,  130  0.  G. 
1311  (1907). 

223.  Stay  of  Proceedings — How  Obtained.  Motions 
brought  under  Rules  309  and  122,  when  set  for  hearing, 
stay  proceedings  pending  the  determination  of  the  mo- 
tions. Rule  123.  In  all  other  cases  a  motion  to  stay 
proceedings  must  be  brought  under  Rule  123,  which  mo- 
tion should  set  forth  with  particularity  the  circumstances 
of  the  case  which  make  it  necessary  that  the  proceedings 
be  sta^^ed.  Iloegh  v.  Gordon,  108  0.  G.  797.  Proceed- 
ings may  be  suspended  by  stipulation.  McKean  v.  Morse, 
94  0.  G.  1557 ;   1901  C.  D.  33. 

224.  Insufficient  Grounds.     An  interference  proceed- 

127 


ing  will  not  be  suspended  to  permit  a  party  to  take  out  a 
patent  upon  a  closely  allied  invention,  merely  because 
through  the  interference  the  opposing  party  might  learn 
of  such  other  application.    Field,  130  0.  G.  1687  (1906). 

The  taking  of  testimony  on  the  question  of  priority 
will  not  be  suspended  until  the  question  of  the  right  to 
make  the  claims  has  been  determined.  Hewitt  v.  Wein- 
traul.  etc.,  128  0.  G.  1689  (1907). 

Ex  Parte  Rights.  Proceedings  will  not  be  stayed  to 
consider  ex  parte  rights,  since  such  rights  should  be  con- 
sidered after  decision  on  priority.  Dunhar  v.  Schellen- 
ger,  121  0.  G.  687  (1905)  ;  Marl:  v.  Gre'eneivalt,  118  0. 
G.  1068  (1905). 

The  fact  that  one  of  the  parties  to  an  interference  has 
a  patent  and  has  an  infringement  suit  pending  against 
the  other  party,  is  no  ground  for  suspending  the  pro- 
ceedings in  the  interference.  McBride  v.  Kemp.  109  0. 
G.  1069.  Xor  is  the  fact  that  it  is  alleged  that  joint  ap- 
plicants are  not  .joint  inventors,  since  that  is  a  question 
which  may  be  determined  on  final  hearing.  Eohinson  v. 
Muller  d-  Bonnet,  110  0.  G.  1-129. 

225.  Interference  Terminated  as  to  Some  Parties — Ef- 
fect of  Stay.  A  stay  of  proceedings  after  the  termination 
of  an  interference  as  to  some  of  the  parties,  only  operates 
as  to  the  remainder  of  such  parties.  Siraren  i'.  Sand^ge, 
etc.,  17  Gour.  34-1  r April.  1905\ 

226.  Resumption — Suspended  to  Hear  Motion.  "Wliere 
proceedings  are  suspended  to  hear  a  motion,  they  are  re- 
.sumed  on  the  date  the  motion  is  finally  determined,  and 
no  notice  of  resumption,  other  than  notice  of  the  deci- 
sion, is  necessary.  Greuter  v.  Maihieu,  112  0.  G.  253; 
Blnckman  v.  Alcrauder,  105  0.  G.  2059  (1903).  But  in 
Hewitt  V.  Steinmctz,  122  0.  G.  1396  (1906),  it  was  held 
that  times  fixed  for  taking  testimony  do  not  commence 
to  run  after  suspension  of  proceedings  for  consideration 
of  motions  for  dissolution,  until  the  cases  are  returned  to 

128 


the  Examiner  of  Interferences  and  formal  notice  of  re- 
snmption  of  proeeedinji's  is  noted. 

227.  Appeal — Effect  of  Stay.  If  a  stay  of  proceedings 
is  obtained  after  a  decision  is  made  and  the  time  for 
appeal  is  fixed,  such  stay  stops  the  running  of  time  for 
appeal,  but  the  time  for  appeal  begins  to  run  again  as 
soon  as  the  stay  is  ended  and  whatever  time  shall  have 
expired  between  the  time  the  limit  of  appeal  was  fixed 
and  the  granting  of  the  stay,  is  lost  to  the  party  who  ob- 
tains the  stay,  and  he  has  only  the  remainder  of  the  time 
originally  fixed  for  appeal.  Blackman  v.  Alexander,  105 
0.  G.  2059  (1903). 

Order  of  Suspension  Modified  After  Appeal.  An  order 
suspending  proceedings  may  be  modified  after  appeal, 
provided  the  questions  presented  on  appeal  are  not  af- 
fected thereby.    Herreshoff  v.  Knieise'li,  111  0.  G.  1624. 

After  Appeal  Stay  Unnecessary.  After  a  party  has 
appealed  no  stay  of  proceedings  is  necessary,  but  if  the 
circumstances  make  it  necessary  to  have  more  time  for 
taking  some  action,  the  proper  practice  would  be  to  ask 
that  the  hearing  on  appeal  be  continued.  Bohinson  v. 
Townsend  v.  Copeland,  106  0.  G.  997  (1903). 

Appeal  to  the  Court  of  Appeals — Time  For  Not  Stayed. 
The  oifice  can  not  stay  the  running  of  time  for  appeal  to 
the  Court  of  Appeals,  D.  C,  because  that  is  a  matter  con- 
trolled by  the  rules  of  the  court.  Clement  v.  Richards  v. 
Weissner,  16  Gour.  52-10.  J^ac  OcnXut    fff?  ^^' 

RES  ADJUDICATA.       y       "^t^X^^   /<^ ><^  Cr  ^  ■  2^ / 

228.  Successive  Interferences — Res  Adjudicata.  Where 
after  final  decision  in  an  interference,  claims  are  pre- 
sented hj  the  losing  party  which  are  such  that  they 
would  dominate  the  subject  matter  upon  which  the  other 
party  prevailed,  the  decision  in  the  interference  would 
be  res  adjudicata.  In  re  Curtiss,  238  0.  G.  650,  46  App. 
D.  C.  183. 

As  to  claims  involved  in  a  second  interference  between 
n  129 


the  same  parties  which  could  have  been  made  in  the  first 
interference  on  the  question  of  priority,  the  first  deci- 
sion is  res  adjudicata.  Hoipkins  v.  Newman,  131  0.  G. 
1161  (1907). 

229.  What  Questions  Are  Determined  by  Interference. 
A  final  decision  in  an  interference  proceeding,  as  between 
the  parties  thereto,  is  conclusive  as  to  all  questions  which 
were  or  could  have  been  presented  and  determined  by 
that  proceeding.  Blackford  v.  Wilder,  28  App.  D.  C. 
535,  127  0.  G.  1255  (1907)  ;  Sarfert  v.  Meyer,  109  0.  G. 
1885;  Cross  v.  Rushy,  42  App.  D.  C.  227,  204  0.  G. 
1347 ;  Horine  v.  Wende,  29  App.  D.  C.  415 ;  1907  C.  D. 
615. 

230.  Second  Interference — When  Allowed.  Second  in- 
terferences will  be  allowed  only  under  exceptional  cir- 
cumstances and  will  not  ordinarily  be  declared  upon 
claims  to  the  same  device  differing  from  the  first  issue 
merely  in  scope.  Corey  cO  Baker  v.  Trout  v.  McDermoU, 
110  0.  G.  306. 

Second  Interference — Rule  109.  The  purpose  of  Kule 
109  is  to  avoid  second  interferences,  and  where  a  party 
fails  to  take  advantage  of  that  rule  he  loses  the  right  to 
contest  the  question  of  priority  as  to  the  claims  made  by 
his  opponent.  Sution,  Steele  &  Steele,  121  0.  G.  1012 
(1906). 

231.  Judgments  in  Interferences.  There  are  two  kinds 
of  judgments  in  interferences,  interlocutory  and  final 
judgments. 

A  final  judgment  is  one  which  determines  the  rights  of 
the  parties  in  the  matter  in  controversy,  or  a  definite 
branch  of  it  and  reserves  no  further  question  for  future 
determination,  but  a  judgment  may  be  final  though  it 
does  not  determine  the  rights  of  the  parties  if  it  ends  the 
suit. 

All  interlocutor}^  judgment  is  one  which  does  not  dis- 
pose of  the  suit  but  reserves  some  further  question  for 
future  determination. 

130 


An  interference  is  for  the  purpose  of  determining 
who,  as  between  the  parties  to  it,  was  the  first  in  point  of 
time  to  invent  the  subject  matter  in  issue. 

In  declaring  the  interference  the  Examiner  settles  to 
his  own  satisfaction  all  preliminary  questions  which  must 
be  determined  in  order  that  the  question  of  priority  may 
be  investigated  and  determined  by  final  judgment.  To 
do  this  he  determines  that  the  issue  is  patentable ;  that 
it  is  properly  declared  so  that  there  may  be  a  proper 
determination  of  the  question  of  priority;  that  each  of 
the  parties  has  the  right  to  make  the  claims  and  who  are 
the  senior  and  junior  parties.  If  any  party  desires  to 
question  the  correctness  of  his  conclusions  he  should  do 
so  by  appropriate  motions  provided  by  the  rules  of  prac- 
tice, as  for  instance,  if  he  wishes  to  question  the  deci- 
sion as  to  whether  he  is  a  junior  or  the  senior  party,  he 
should  move  to  shift  the  burden  of  proof.  A  decision  on 
this  motion  would  be  an  interlocutory  judgment  from 
which  there  is  no  appeal,  but  which  may  be  presented 
again  on  appeal  from  the  final  decision  on  priority.  If 
a  party  believes  the  issue  is  not  patentable  he  moves 
to  dissolve  the  interference  for  that  reason  and  if  upon 
this  motion  the  Law  Examiner  holds  the  issue  is  not 
patentable,  this  is  a  final  judgment  and  puts  an  end  to 
the  interference  unless  one  or  more  of  the  parties  appeal 
and  obtain  a  reversal  of  the  judgment.  This  though  a 
final  judgment,  is  not  a  final  judgment  on  priority,  there 
being  no  question  of  priority  involved.  The  foregoing 
are  given  as  illustrations  of  interlocutory  and  final  judg- 
ments. 

231a.  What  Questions  Should  Be  Presented  by  Motions. 
All  questions,  except  those  involving  priority',  should  be 
presented  by  appropriate  motions  as  provided  in  the 
rules.  Some  questions  which  should  first  be  presented 
by  motion  may  also  be  urged  at  final  hearing  as  involving 
the  question  of  priority,  illustrations  of  which  will  be 

131 


found  ill  Sec.  154a.  Questions  anciliary  to  the  question 
of  priority  are  set  forth  in  Sec.  192. 

232.  Res  Adjudicata.  When  a  second  suit  is  upon  the 
same  cause  of  action,  and  between  the  same  parties  as  the 
first,  the  judgment  in  the  former  is  conclusive  in  the  lat- 
ter as  to  every  question  which  was  or  might  have  been 
presented  and  determined  in  the  first  action;  but  when 
the  second  suit  is  upon  a  different  cause  of  action,  though 
between  the  same  parties,  the  judgment  in  the  former 
action  operates  as  an  estoppel  only  as  to  the  point  or 
question  actually  litigated  and  determined,  and  not  as 
to  other  matters  which  might  have  been  litigated  and 
determined.  Neshit  v.  Riverside  Independent  District, 
144  U.  S.  610,  618;  Neiv  Orleans  v.  Citizen's  Bank,  167 
U.  S.  371,  386;  S.  P.  R.  R.  v.  U.  S.,  168  U.  S.  1,  48.  It 
was  held  that  the  doctrine  as  above  stated  is  applicable 
to  decisions  of  the  Patent  Office.  It  was  therefore  held 
in  Blackford  v.  Wilder,  127  0.  G.  1255  (1907),  28  App. 
D.  C.  535;  Wende  v.  Horine,  129  0.  G.  2858,  29  App. 
D.  C.  415,  and  In  re  Marconi,  179  0.  G.  577,  38  App.  D. 
C.  286,  that  the  losing  party  in  an  interference  can  not, 
after  the  interference,  present  claims  which  will  dom- 
inate the  issue  involved  in  the  interference.  In  other 
words,  the  party  who  prevails  in  the  interference  is  by 
reason  of  the  judgment  of  priority  given  the  right  to  the 
subject  matter  involved  and  it  can  not  afterward  be 
given  to  another  without  taking  it  from  him,  and  the 
question  of  his  right  to  it  having  been  fairly  tried,  he 
shoidd  not  and  can  not  be  forced  to  retry  the  question, 
except  upon  appeal.  See  also  Carroll  v.  Ilalwood,  135 
0.  G.  896,  31  App.  D.  C.  165. 

The  fact  that  a  party  has  a  right  under  the  statute  to 
bring  an  action  in  equity  to  obtain  a  patent  notwith- 
standing such  judgment  of  priority,  does  not  lessen  the 
force  of  tho  foregoing  decisions,  since  this  is  a  right 
granted    l)y   statute   to   retry   the   issues   and   must   be 

132 


availed  of  in  accordance  with  the  pi"o\'isioiis  of  the  stat- 
ute. 

In  harmony  also  with  the  foregoing  decisions  is  the 
later  case  of  Kushij  /•.  Cross,  204  0.  G.  321,  42  App.  D.  C. 
341.  Rusby  prevailed  in  the  interference.  He  then  pre- 
sented claims  dominating  certain  craims  of  a  patent  in- 
advertently issued  to  Cross,  the  claims  of  which  were  not 
involved  in  the  interference.  Because  Cross  could  have 
presented  these  claims  but  failed  to  do  so,  it  was  held 
that  the  judgment  of  priority  awarded  Rusby  was  res 
adjudicata  as  to  those  claims.  Each  party  was  demand- 
ing a  right  to  the  claims  which  formed  the  subject  mat- 
ter of  the  interference  and  it  was  incumbent  on  each 
party  to  present  whatever  facts  he  could  to  sustain  his 
right  therto.  A  winning  party  in  an  interference  should 
not  be  disturbed  in  the  full  enjoyment  of  that  which  he 
has  won,  nor  should  he  be  penalized  by  further  litiga- 
tion for  which  there  is  no  excuse  other  than  that  his 
opponent  neglected  to  present  all  the  facts  which  he 
could  have  presented. 

233.  Broad  Claims  Presented  After  Termination  of  In- 
terference— Res  Adjudicata.  Where  after  termination  of 
an  interference  involving  only  narrow  claims,  the  win- 
ning party  takes  out  a  patent  on  the  narrow  claims,  not 
claiming  the  invention  broadly,  and  the  losing  party  es- 
tablishes by  competent  evidence  that  he  made  another 
species  of  the  invention  patentably  different  from  that 
involved  in  the  interference  prior  to  the  date  of  inven- 
tion established  by  his  opponent,  he  is  entitled  to  a  claim 
broad  enough  to  cover  both  forms  of  the  invention  not- 
withstanding the  adverse  decision  in  the  interference. 
Such  is  the  holding  by  the  Board  of  Examiners  in  Chief. 
In  re  Klahn,  241  0.  G.  623;  1917  C.  D.  7  (See  Estoppel, 
Sec.  242). 

In  Temple  v.  Goodrum,  176  O.  G.  526,  the  losing  party 
in  the  interference,  after  judgment  on  priority,  pre- 
sented claims  which  read  upon  his  ow^n  case  and  the  two 

133 


other  cases  with  which  he  liad  been  involved  but  which 
could  not  have  been  added  to  that  interference  because  of 
a  decision  in  another  interference  adverse  to  one  of  the 
parties.  These  claims  were  held  res  adjudicata  because 
the  applicant  could  have  presented  and  contested  them 
with  the  other  party  who  could  have  made  them,  concur- 
rently with  the  other  interfering  subject  matter. 

In  Frickeij  v.  Ogden,  199  0.  G.  307,  it  was  held  that 
where  during  the  pendency  of  an  interference  between 
Ogden  and  Cornwall,  but  too  late  to  be  added  thereto,  an 
application  was  filed  by  Frickey  which  was  assigned  to 
the  same  party  as  that  of  Cornwall  and  it  appeared  that 
the  assignee  controlled  both  inventions  and  could  have 
filed  the  application  of  Frickey  in  time  for  it  to  have 
been  included  in  the  interference  between  Ogden  and 
Cornwall,  but  neglected  to  do  so,  he  was  estopped  to  con- 
test further  with  Ogden  the  subject  matter  thereof. 

234.  Motion  to  Dissolve — When  Judgment  is  Res  Ad- 
judicata. When  a  motion  to  dissolve  on  the  ground  that 
a  party  has  no  right  to  make  the  claims  is  sustained  and 
no  appeal  is  taken,  such  judgment  is  final  as  to  the  right 
of  the  losing  party  to  a  patent,  or  in  other  words,  it  is 
res  adjudicata  in  the  further  prosecution  of  his  applica- 
tion. U.  8.  ex  rel.  Neivcomh  Motor  Co.  v.  Moore,  133  0. 
G.  1680,  30  App.  D.  C.  464. 

Motion  to  Dissolve — Unpatentability.  Since  every  ap- 
plicant is  entitled  to  appeal  to  the  Court  of  xVppeals  on 
the  patentability  of  his  claims  and  since  motions  to  dis- 
solve can  be  carried  no  farther  than  the  Commissioner, 
the  dissolution  on  this  ground  is  not  conclusive  against 
the  parties.  Gold  v.  Gold,  150  0.  G.  570,  34  App.  D.  C. 
229. 

Right  of  Prevailing  Party  to  Patent — Not  Res  Adjudi- 
cata. Tlie  riglit  of  the  prevailing  party  in.  an  interfer- 
ence to  a  patent  is  not  conclusively  determined  by  a  judg- 
ment of  priority  because  it  may  be  tbat  a  statutory  bar 
exists  such   as   ]Miblic   use.     After  the    interference   is 

134 


terminated  public  use  proceedings  may  be  instituted  and 
the  issue  in  such  ease  is  not  one  of  priority,  nor  is  it  con- 
fined to  the  structures  or  parties  to  tlie  interference. 
In  re  Pittsburgh  Brake  Shoe  Co.,  176  0.  G.  750  (1912)  ; 
Gueniffet,  etc.  v.  Wictorsohn,  134  0.  G.  255,  134  0.  G. 
779,  30  App.  D.  C.  432. 

235.  Prior  Motion — Res  Adjudicata.  Where  a  party 
makes  a  motion  he  must  set  up  all  that  he  can  offer  in 
support  thereof  as  he  is  precluded  from  bringing  an- 
other motion  upon  the  same  ground.  Toivtisend  v.  Ehret, 
etc.,  137  0.  G.  1485  (1908)  ;  Townsend  v.  Thullen  v. 
Young,  137  0.  G.  1710  (1908). 

236.  Judgment  of  Priority — Eifect.  Under  the  rules 
and  practice  of  the  Patent  Office  the  decision  of  the  Ex- 
aminer of  Interferences  on  a  declared  interference  deter- 
mines only  the  question  of  priority  of  invention  in  time 
as  between  the  parties,  and  the  party  against  whom  the 
decision  is  rendered  may  still  contend  that  the  successful 
party  is  not  entitled  to  the  claims  made,  and  he  is  not 
concluded  upon  the  question  of  his  right  to  a  patent 
until  the  expiration  of  the  time  allowed  him  by  statute 
for  an  appeal  from  the  final  order  rejecting  his  applica- 
tion.   Westifighouse  v.  Hien,  et  al.,  159  Fed.  936. 

A  judgment  in  an  interference  is  to  the  effect  that  the 
losing  party  is  not  the  first  inventor  of  the  subject  mat- 
ter in  issue  and  he  is  therefore  not  entitled  to  a  patent 
as  to  that  issue.  But  such  judgment  is  not  conclusive 
against  the  losing  party  under  all  circumstances,  for, 
it  may  appear  that  subsequent  to  the  rendition  of  the 
judgment  the  prevailing  party  abandoned  his  applica- 
tion, never  in  any  way  gave  his  invention  to  the  public 
and  never  took  out  his  patent.  And  where  the  judgment 
was  rendered  upon  the  record  because  the  losing  party 
failed  to  produce  any  testimony  to  support  his  prelim- 
inary statement,  the  prevailing  party  was  not  required 
to  take  testimony  and  the  judgment  was  therefore  based 
upon  the  applications,  there  being  no  evidence  of  actual 

185 


reduction  to  practice  by  either  party.  In  such  case,  if 
the  prevailing  party,  after  judgment,  permits  his  appli- 
cation to  become  abandoned  and  has  in  no  way  given  his 
invention  to  the  public,  he  has  not  completed  the  act  of 
invention  by  in  any  manner  giving  the  public  the  ben- 
efit of  his  invention.  Since  an  abandoned  application  is 
not  a  bar  to  the  granting  of  a  patent  to  another,  the  los- 
ing party  in  such  interference,  if  he  has  kept  his  appli- 
cation alive,  is  entitled  to  a  patent  on  the  issue  notwith- 
standing such  judgment  of  priority.  It  was  held  in  Ex 
parte  Phelps,  176  0.  G.  525,  that  a  judgment  of  priority 
was  a  bar  to  the  claims  of  the  losing  part}^  even  though 
the  prevailing  party  had  permitted  his  application  to 
become  abandoned  after  judgment  and  there  was  no  tes- 
timony taken  in  the  interference  to  show  an  actual  reduc- 
tion to  practice  by  the  prevailing  party.  But  in  Jolliffe 
V.  Waldo  V.  Vermer  &  Schorick,  234  0.  G.  671  (1916), 
Commissioner  Ewing  did  not  agree  with  the  reasoning  in 
Ex  parte  Phelps,  176  0.  G.  525,  and  held  that  the  losing 
party  under  such  circumstances  was  entitled  to  a  patent 
notwithstanding  the  judgment  of  priority  against  him. 
See  also  Fauslow  v.  Whitney,  266  0.  G.  742  (1910). 

237.  Judgement  on  the  Record — When  Not  Permissible. 
Where  a  junior  party  to  an  interference  alleges  in  his 
preliminary  statement  a  date  of  conception  of  the  inven- 
tion in  issue  prior  to  the  senior  party's  filing  date,  but 
the  other  dates  alleged  are  subsequent  thereto,  an  order 
to  show  cause  why  judgment  should  not  be  rendered  on 
tlie  record  should  not  be  granted,  as,  conception  might  be 
proved  as  alleged.  Peters  v.  Hopkins  d:  Dement,  150  0. 
G.  1044,  34  App.  D.  C.  141. 

238.  Motion  for  Judgment  on  the  Record — Question 
Raised.  A  motioii  for  judgment  on  tlie  record  in  an  in- 
terference does  not  present  the  case  for  final  hearing  on 
the  merits,  but  raises  only  tlie  (piestion  of  the  sufficiency 
of  the  allegations  of  the  preliminary  statements  of  the 
opposing  parties,  admitting  their  truth  for  the  purposes 

136 


of  the  motion  only.  Lindmark  v.  Dc  Ferrnnii,  153  0.  C 
1082,  .'U  A])p.  1).  ('.  445.  But  where  the  junior  party 
in  his  preliminary  statement  fails  to  allege  a  date  of 
conception  earlier  than  tiie  filing  date  of  his  opponent, 
judgment  of  priority  will  he  awarded  to  the  senior  party 
on  the  record.  Ncih  tC-  TanipJIn  v.  Ohmcr,  123  0.  G.  998. 
In  response  to  a  motion  to  show  cause  why  judgment 
should  not  he  rendered  upon  the  record,  a  party  may 
move  to  dissolve  the  interference.  Field  v.  Colman,  131 
0.  G.  1686  (1907);  Felhel  v.  Fox,  130  0.  G.  2375 
(1907);  Jar  vis  v.  de  Focatiis,  20  Gour.  66-4  (Mar., 
1908). 

239.  For  Failure  to  File  Preliminary  Statement. 
Where  a  part}'  fails  to  file  any  preliminary  statement 
and  his  filing  date  is  later  than  that  of  one  of  his  op- 
ponents, an  order  will  be  made  to  show  cause  why  judg- 
ment should  not  be  entered  against  him.  If  he  fails  to 
respond  to  this  order  judgment  will  be  rendered  that  he 
is  not  the  first  inventor,  but  where  there  are  several 
parties  such  judgment  is  not  a  holding  that  he  was  the 
last  of  all  the  parties  to  make  the  invention.  Dutcher  v. 
Matthew,  etc.,  118  0.  G.  2538  (1905). 

240.  For  Failure  to  Print  Testimony.  Judgment  of 
priority  will  be  awarded  against  a  junior  party  who  fails 
to  print  his  testimony.  Brown  v.  Gillett,  191  0.  G.  832 
(1913). 

241.  For  Failure  to  Take  Testimony.  When  the  time 
for  taking  testimony  has  expired  and  no  testimony  has 
been  taken  or  filed  by  either  party,  it  is  the  duty  of  the 
Examiner  of  Interferences  to  award  priority  to  the 
senior  party  under  Rule  116.  Brough  v.  Snyder,  94  0. 
G.  221 ;  1901  C.  D.  3. 

ESTOPPEL. 

242.  By  Judgment  in  Interference  (See  title  Judg- 
ment ) . 

By  Concealment  (See  title  Concealment). 

137 


To  Deny  Validity  of  Patent  After  Contesting  an  Inter- 
ference. Where  a  party  has  made  application  for  a  pat- 
ent on  the  invention  and  contested  an  interference  in  re- 
gard to  it,  the  contention  against  his  successful  rival 
that  the  invention  is  not  patentable  does  not  come  with 
good  grace.  R.  Thomas  cC-  Sons  Co.  v.  The  Electric 
Porcelain  cf-  Mfg.  Co.,  et  ah,  111  Fed.  923,  97  0.  G.  1838; 
1901  C.  D.  510.  Nevertheless  a  defeated  party  in  an  in- 
terference is  not  estopped  to  deny  the  validity  of  the 
patent  granted  on  his  opponent's  application.  -Auto- 
matic RacJiing  Machine  Co.  v.  ^Vhite  RacJcer  Co.,  145 
Fed.  643,  645. 

To  Make  Claim  After  Rights  or  Third  Parties  Have  In- 
tervened. A  party  is  not  estopped  from  subsequently 
making  a  claim  to  an  invention  unless  there  is  a  failure 
of  the  specification  to  disclose  it.  The  absence  of  a  def- 
inite and  special  claim  for  an  invention  when  the  appli- 
cation was  originally  filed  does  not  act  as  an  estoppel  to 
the  subsequent  making  of  the  claim.  In  Bechman  v. 
Wood,  89  0.  G.  2462,  and  Miehle  v.  Read,  18  App.  D.  C. 
128,  96  0.  G.  426,  it  was  held  that  where  there  are  inter- 
vening rights  an  applicant  may  not  broaden  his  claims  to 
destroy  those  rights.    Furman  v.  Dean,  114  0.  G.  1552. 

By  Failure  to  Appeal.  Where  action  is  taken  by  the 
office  upon  motion  to  dissolve  an  interference  from  which 
an  appeal  may  be  taken  in  the  interference  and  the  op- 
portunity for  such  appeal  is  neglected,  an  ex  parte  ap- 
peal thereafter  upon  the  same  matter  will  not  be  enter- 
tained except  where  the  right  of  appeal  is  statutory. 
Xewcomh  v.  Thompson,  122  0.  G.  3012  (1906). 

242a.  By  Failure  to  Make  Claims  Under  Rule  109. 
The  purpose  of  Rule  109  is  to  avoid  a  second  interfer- 
ence, and  where  a  party  fails  to  take  advantage  of  that 
rule  he  loses  his  right  to  contest  the  question  of  priority 
as  to  the  claims  made  by  his  opponent.  Sutton  v.  Steele 
cC-  Steele,  121  0.  G.  1012  (1906). 

By  Admissions  of  Solicitor  in  Prosecution  of  Applica- 
138 


tion.  A  party  is  estopped  to  deny  admissions  made  by 
his  solicitor  in  the  i)rosecution  of  his  application.  Weis- 
senthanner  v.  Dodc/e  Metallic  Cap  Co.,  156  Fed.  365,  368, 

243.  Judicial  Notice.  Since  the  Commissioner  of  Pat- 
ents may  take  judicial  notice  of  facts  adjudicated  by  the 
Supreme  Court  of  the  United  States  in  a  cause  passed 
upon  by  that  court,  he  maj"  for  a  stronger  reason  act 
upon  knowledge  deri^ed  from  a  search  of  the  records  of 
litigation  and  decisions  made  in  his  own  department  even 
though  such  records  have  not  been  formally  introduced 
in  evidence.  In  Ee  Marconi,  179  0.  G.  577,  38  App.  D. 
C.  286 ;  1912  C.  D.  483 ;  In  re  Drawhaugh,  1896  C.  D. 
527,  77  0.  G.  313,  9  App.  D.  C.  219;  McDermott,  15 
Gour.  88-26  (Oct.,  1903). 

The  Commissioner  takes  judicial  notice  of  the  deci- 
sions of  the  Court  of  Appeals,  D.  C.  Tournier,  108  0.  G. 
798. 

Facts  of  which  the  tribunal  before  whom  the  cause  is 
tried,  is  bound  to  take  judicial  notice,  need  not  be  proven. 
Ball  V.  Flora,  121  0.  G.  2668  (1905). 

Judicial  notice  will  be  taken  of  the  contents  of  stand- 
ard books  of  reference.  Werk  v.  Parker,  264  0.  G.  159, 
249  U.  S.  130. 

While  the  court  takes  notice  of  its  own  records,  it  can 
not  travel  for  this  purpose  out  of  the  records  relating  to 
the  particular  case.  Thus  in  one  case  the  court  can  not 
take  notice  of  the  proceedings  in  another  case,  unless 
such  proceedings  are  put  in  evidence.  Wharton  on  Evi- 
dence, Vol.  1,  See.  326. 

The  court  can  not  in  one  case  take  judicial  notice  of 
the  records  in  a  different  case,  even  though  pending  in 
the  same  court.  Nor  will  it  take  judicial  notice  in  a  given 
case  of  the  pendency  of  proceedings  in  other  causes  in 
the  same  court,  much  less  of  those  of  other  courts.  Jones 
on  Evidence,  Sec.  129. 

Special  Knowledge  of  the  Judge.  A  judge  has  no  right 
to  act  upon  his  own  personal  or  special  knowledge  of 

•  139 


facts,  as  distinguished  from  that  general  knowledge 
which  might  l)e  important  to  other  persons  of  intelli- 
gence, since  if  the  judge  knows  anything  which  would  aid 
one  of  the  parties  he  should  be  called  from  his  place  as 
judge  and  become  a  witness.  Jones  on  Evidence,  Sec. 
133. 

MOTIONS. 

244.  (See  Forms,  Dissolution,  Preliminary  State- 
ment, Hearing,  Burden  of  Proof,  Stay  of  Proceedings.) 

Interlocutory  Motions — What  Are  Permitted.  '  Inter- 
locutory motions  are  not  permitted  upon  matters  which 
can  not  be  determined  from  a  consideration  of  the  appli- 
cation and  office  records  and  which  require  the  taking  of 
proofs.    Cory,  etc.  v.  Blakey,  115  0.  G.  1328. 

Piecemeal  prosecution  is  against  the  policy  of  the  of- 
fice, and  hence  a  party  may  not  make  a  motion  which 
embodies  but  a  part  of  his  grounds  for  relief  and  after 
that  has  been  determined,  file  other  motions  for  other 
reasons  which  could  have  been  and  should  have  been  in- 
cluded in  the  first  motion.  Williams  v.  Wehster  v. 
Sprague,  148  0.  G.  280  (1909)  ;  Egly  v.  Schultz,  117  0. 
G.  276  (1905). 

To  Dissolve  Interference.     (See  Dissolution.) 

To  Transmit  Motions.  Where  a  party  desires  to  pre- 
sent a  question  which  can  not  be  passed  upon  by  the  par- 
ticular tribunal  before  whom  the  case  is  at  the  time 
pending  because  of  lack  of  jurisdiction  to  hear  the  mo- 
tion, it  is  necessarj'  to  make  a  motion  to  transmit  the  mo- 
tion to  such  tribunal.  A  motion  to  transmit  should  be 
accompanied  by  the  motion  which  is  to  be  transmitted. 
Under  the  present  rules  such  motions  are  filed  before  and 
passed  ujion  by  the  Commissioner.  If  in  the  opinion  of 
the  Commissioner  the  motion  be  not  in  proper  form,  or 
if  it  be  not  brought  within  th(>  time  specified  and  no 
satisfactory  reason  be  given  for  the  delay,  it  will  not  be 
tran.smitted.     Kule  122.     If  the  motion  is  transmitted, 

140 


it  is  sent  to  the  Law  Examiner  for  his  opinion  thereon. 
Under  the  former  i)ractice  and  under  which  most  of  the 
decisions  elsewhere  considered  under  the  head  of  ''dis- 
solution" were  rendered,  a  motion  to  transmit  a  motion 
to  dissolve  was  filed  before  the  Examiner  of  Interfer- 
ences and  if  granted,  the  original  motion  then  went  to 
the  Primary  Examiner  for  determination.  Since  the 
change  in  the  rules  relate  to  the  jurisdiction  of  the  offi- 
cial who  is  authorized  to  pass  upon  the  same,  it  is  be- 
lieved that  the  decisions  under  the  old  rules  will  apply 
under  the  new  rules  in  so  far  as  the  form  and  merits  of 
such  motions  are  concerned. 

To  Shift  the  Burden  of  Proof.  Motions  to  shift  the  bur- 
den of  proof  should  be  filed  before  and  decided  by  the 
Examiner  of  Interferences.  Rule  122  (See  Burden  of 
Proof). 

To  Amend  Preliminary  Statement.  (See  Preliminary 
Statement — Amendment  of. ) 

To  Postpone  Time  for  Filing  Preliminary  Statement. 
Rule  104.     (See  Preliminary  Statement.) 

To  Postpone  Hearing.     (Rules  120-153.    See  Hearing.) 

To  Extend  Time  for  Taking  Testimony.  The  granting 
or  refusing  of  a  motion  to  extend  time  for  taking  of  tes- 
timony is  wholly  within  the  discretion  of  the  Examiner 
of  Interferences  and  no  appeal  lies  from  his  decision 
upon  such  motion,  though  in  extreme  cases  where  an 
abuse  of  discretion  is  .shown,  resulting  in  great  hardship 
to  a  party,  the  ruling  may  be  reviewed  on  appeal.  Good- 
fellow  V.  Jolly,  115  0.  G.  1064 ;  1905  C.  D.  105 ;  Chris- 
tensen  v.  McKenzic,  117  0.  G.  277;  1905  C.  D.  238; 
Dalton  V.  Hopkins,  321  0.  G.  2666  (1906). 

Delay  in  bringing  the  motion  may  result  in  its  re- 
fusal. Donning  v.  Anderson,  111  0.  G.  582.  And 
where  a  party  made  no  effort  to  take  testimony  as  to 
priority  within  the  time  set,  but  devoted  his  time  to  the 
investigation  of  public  use  of  the  invention,  it  was  held 

141 


that  au  extension  of  time  was  properly  refused.  Per- 
rault  V.  Pierce,  108  0.  G.  2146. 

The  motion  should  clearly  set  forth  the  grounds  upon 
which  the  extension  is  asked  and  state  why  the  testimony 
could  not  be  taken  during  the  time  originally  allowed. 
EeynoJds  v.  Bean,  101  0.  G.  2821:  1902  C.  D.461.  The 
motion  should  be  brought  before  the  time  originally  set 
has  expired.  Turner  v.  Benzinger,  102  0.  G.  1552 
(1903):  Byron  v.  Henry,  104  O.  G.  1895  (1903).  A 
party  may  not  voluntarily  put  himself  in  a  position 
where  his  testimony  can  not  be  taken  and  then  ask  to 
be  relieved  of  his  own  fault  or  negligence,  as  such  action 
wiU  be  regarded  as  a  waiver  of  his  right  to  take  testi- 
mony.   Davis  V.  Cody,  101  0.  G.  1369 ;  1902  C.  D.  220. 

Since  the  granting  or  refusing  a  motion  to  extend 
time  for  taking  testimony  is  a  matter  within  the  discre- 
tion of  the  Examiner  of  Interferences,  each  motion  pre- 
sented must  rest  upon  its  own  inherent  merits.  It  would 
seem  that  the  rules  of  the  courts  in  granting  contin- 
uances should  be  made  applicable  to  motions  of  this 
character,  though  it  seems  that  the  office  has  not  thus 
far  applied  such  rules,  as  where  an  etxension  is  asked 
because  of  the  inability  of  a  party  to  procure  the  testi- 
mony of  a  certain  witness,  three  elements  should  concur : 
(1)  Materiality  and  admissibility  of  the  e^•idence;  (2) 
due  diligence;  (3)  an  affirmative  showing  that  the  ab- 
.sent  witness  can  and  ^vill  be  produced  at  a  future  time. 

To  Suppress  Testimony.  (See  Testimony — Suppres- 
sion of.) 

To  Take  Testimony  in  a  Foreign  Country.    Rule  158. 

To  Amend  Issue.  Rule  109.  (See  Issue — Amend- 
ment.) 

To  Add  Further  Counts.     (See  Issue.) 

For  Rehearing.       See  Hearing.) 

244a.  To  Amend  a  Motion.  "Where  a  party  makes  a 
motion  which  if  found  to  be  not  in  proper  form,  he  may 
cure  the  defect  by  a  motion  to  amend  the  motion,  pro- 

142 


vided  it  appears  thai  he  is  acting  in  good  faith  and  that 
the  same  was  brought  within  the  time  for  appeal  from 
the  decision  upon  the  former  motion.  Gold  v.  Gold,  131 
0.  G.  1422  (1907)  ;  Rochstroh  v.  Warnock,  132  0.  G. 
234;   McQuarrie  r.  Manson.  142  0.  G.  288  (1909). 

For  Judgment  of  the  Record.  Rule  119.  (See  Judg- 
ment. ) 

To  Take  Testimony  as  to  Operativeness.  (See  Inopera- 
tiveness.) Lowry  cC  Cowley  v.  Spoon,  122  0.  G.  2687; 
Barber  v.  Wood,  132  0.  G.  1588. 

APPEALS. 

245.  To  the  Examiners  in  Chief.  Sec.  4909  E.  S. 
"Every  party  to  an  interference  may  appeal  from  the 
decision  of  the  Primary  Examiner,  or  of  the  Examiner 
in  charge  of  interferences  in  such  case,  to  the  Board  of 
Examiners  in  Chief."    Rules  143,  144,  145  and  146. 

Sec.  4910  R.  S.  "If  sucTi  party  is  dissatisfied  with  the 
decision  of  the  Examiners  in  Chief,  he  may  appeal  to  the 
Commissioner  in  person." 

Extent  of  Right  to  Appeal.  The  right  to  appeal  to  the 
Examiners  in  Chief  in  interference  cases  created  by  stat- 
ute was  to  review  the  question  of  priority  and  such  an- 
cillary questions  as  the  Examiner  had  passed  uJ)on  in 
deciding  the  question  of  priority  for  which  the  inter- 
ference is  instituted.  Allen  Comr.  v.  U.  S.  ex  rel.  Loivry, 
et  al.,  116  0.  G.  2253  (1905). 

Ancillary  questions  which  go  to  the  question  of  prior- 
ity and  which  have  been  passed  upon  by  the  various 
tribunals  of  the  Patent  Office  and  Court  of  Appeals,  D. 
C,  are  set  forth  in  this  work  under  title  of  Relevant 
Testimony,  Sec.  192. 

Judgment  on  the  Record.  Appeal  lies  to  Examiners- 
in-Chief.  McHarg  v.  Sclunidt  &  Mayland,  106  0.  G. 
1780  (1903)  ;  Brow  a  v.  Lindmark,  109  0.  G.  1071. 

246.  To  the  Court  of  Appeals,  D.  C.  In  interference 
cases  the  Court  of  Appeals  has  jurisdiction  to  review  the 

143 


decision  of  the  Commissioner  in  but  one  class  of  deci- 
sions, viz.,  final  awards  of  priority.  Decisions  on  mo- 
tions are  interlocutor}^  judgments  on  which  no  appeal 
lies  to  the  Court  of  Appeals.  No  award  of  priority  may 
be  made  on  motion  to  dissolve  and  before  proofs  are 
taken,  not  even  in  a  case  where  the  motion  is  based  upon 
the  ground  that  a  party  has  no  right  to  make  the  claims. 
If  the  motion  is  denied,  the  soundness  of  the  ruling  is  a 
question  ancillary  to  the  final  judgment  of  priority,  as 
in  Podelsak  v.  Mclnnerney,  26  App.  D.  C.  399.  -If  the 
motion  is  sustained,  it  ends  the  interference  and  no 
cause  of  action  survives  or  exists  upon  which  an  order  of 
priorit}^  can  be  based.  Since  the  statute  imposes  on  the 
Commissioner  the  power  to  declare  in  interference  with- 
out right  of  appeal,  he  may  also  dissolve  it  without  right 
of  appeal.  In  Cosper  v.  Gold,  34  App.  D.  C.  194,  the 
Commissioner  dissoh'ed  the  interference  on  the  ground 
that  Cosper  had  no  right  to  make  the  claims.  On  the 
first  appeal  the  Court  of  Appeals  declined  jurisdiction 
because  there  had  been  no  judgment  of  priority  rendered. 
Thereupon  the  Commissioner  entered  a  judgment  of 
priority  upon  the  ground  that  Cosper  had  no  right  to 
make  the  claims,  and  the  question  of  priority  hinged 
upon  the  question  as  to  whether  Cosper  had  a  right  to 
make  the  claims.  Where  there  has  been  no  hearing  upon 
the  question  of  priority  no  award  of  priority  can  be 
made  on  motion  to  dissolve.  Carlin  v.  Goldberg,  43  App. 
D.  C.  540,  23(i  0.  G.  1222;   1917  C.  D.  128. 

Questions  Which  May  Be  Presented  on  Appeal  on  Pri- 
ority as  Ancillary  Thereto.     (See  Sec.  192.) 

247.  Questions  Not  Considered.  As  we  have  already 
seen,  no  question  will  be  considered  on  appeal  except 
that  of  priority  and  such  questions  as  are  ancillary  there- 
to. The  court  has  declined  to  consider :  that  a  showing 
made  is  not  sufficient  to  establish  that  the  delay  in  prose- 
cution of  the  application  was  unavoidable.  In  re  Car- 
valho,  250  0.  G.  514,  47  App.  D.  C.  584.    Patentability 

144 


of  the  issue.  Hathaway  &  Lea  v.  Colman,  245  0.  G. 
1025,  46  App.  D.  C.  40 ;  Lautenschlager  v.  Glass,  249  0. 
G.  1223,  47  App.  D.  C.  443 ;  Elsom  v.  Bonner  &  Golcle, 
246  0.  G.  299  (1917)  ;  Slingluff  v.  Sweet,  et  al.,  230  0. 
G.  659 ;  1916  C.  D.  224,  45  App.  D.  C.  302 ;  Sohcy  v. 
Holschlaw,  1907  C.  D.  465,  126  0.  G.  3041,  28  App.  D. 

C.  65 ;  Mell  v.  Mkhjley,  1908  C.  D.  512,  136  0.  G.  1534, 
31  App.  D.  C.  534.  Whether  a  statiitorj^  bar  existed  to 
the  granting  of  a  patent  to  the  successful  party.  Burson 
V.  Vogel,  1907  C.  D.  669,  131  0.  G.  942,  29  App.  D.  C. 
388 ;  Lacroix  v.  Tyherg,  150  0.  G.  267,  33  App.  D.  C.  586 ; 
Norling  v.  Hayes,  1911  C.  D.  347,  166  0.  G.  1282,  37  App. 

D.  C.  169.  Whether  either  party  will  have  a  right  to  a 
patent.  Guenifett  v.  Wictorsohn,  1908  C.  D.  367,  134  0. 
G.  779,  30  App.  D.  C.  432.  The  refusal  of  the  Commis- 
sioner to  exercise  his  supervisory  authority  or  of  the  Ex- 
aminers in  Chief  to  act  under  Rule  126.  Elsom  v.  Bonner 
&  Golcle,  246  0.  G.  299  (1917) .  The  court  has  frequently 
refused  to  consider  the  identity  of  the  inventions  claimed 
or  the  right  of  a  party  to  make  the  claims,  except  in  ex- 
treme cases  where  it  has  been  held  that  the  right  to  make 
the  claims  is  a  question  ancillary  to  the  question  of 
priority.  Podelsak  v.  Mclnnerney,  120  0.  G.  1689,  26 
App.  D.  C.  405 ;  U.  S.  ex  rel.  Newcomh  Motor  Co.  v. 
Moore,  133  0.  G.  16S0  (1908),  30  App.  D.  C.  464;  See- 
herger  v.  Dodge,  24  App.  D.  C.  481;  Bechman  v.  South- 
gate,  127  0.  G.  1254  (1906),  28  App.  D.  C.  405;  Swihdrt 
V.  Mauldin,  99  0.  G.  2332,  19  App.  D.  C.  570;  Schup- 
phaus  V.  Stevens,  95  0.  G.  1452,  17  App.  D.  C.  548;  Her- 
man V.  FuUman,  109  0.  G.  1888,  23  App.  D.  C.  259; 
Casper  v.  Gold,  151  0.  G.  194,  34  App.  D.  C.  194.  The 
question  of  operativeness.  Lotterhand  v.  Hanson,  110 
0.  G.  861,  23  App.  D.  C.  372;  Duryea  v.  Rice,  126  0.  G. 
1357  (1906),  28  App.  D.  C.  423.  An  order  dissolving  an 
interference.  The  V  nion  Distilling  Co.  v.  Schneider,  129 
0.  G.  2503  (1907),  29  App.  D.  C.  1 ;  Brooks  v.  Hillard, 
111  0.  G.  302,  23  App.  D.  C.  526.    Granting  or  refusing 

12  145 


a  rehearing.  Greenwood  v.  Dover,  109  0.  G.  2172,  23 
App.  D.  C.  251 ;  Richards  v.  Meissner,  114  0.  G.  1831. 
Or  any  interlocutory  motion  except  in  extreme  cases 
where  it  is  plain  that  there  has  been  an  abuse  of  discre- 
tion exercised  by  the  lower  tribunals.  Bitter  v.  Krakau 
&  Conner,  114  6.  G.  1553,  24  App.  D.  C.  271 ;  Parker  v. 
Craft  &  Reynolds,  265  0.  G.  309,  258  Fed.  988;  Dunhar 
V.  Schellenger,  128  0.  G.  2837  (1907),  29  App.  D.  C. 
129;  Kinsman  v.  Strohm,  136  0.  G.  1769  (1508),  31 
App.  D.  C.  581 ;  Universal  Motor  Truck  Co.  v.  Universal 
Motor  Car  Co.,  197  0.  G.  535,  41  App.  D.  C.  261.  Ke- 
fusal  to  extend  the  time  within  which  a  preliminary 
statement  may  be  filed,  except  where  it  clearly  appears 
that  there  was  an  abuse  of  discretion.  Chnrchill  v. 
Goodivin,  141  0.  G.  568,  32  App.  D.  C.  428. 

The  right  to  take  expert  testimony.  Weintrauh  v. 
Hewitt,  154  0.  G.  254,  34  App.  D.  "c.  487.  Whether 
there  was  sulScient  reason  for  delay  in  presenting  a  mo- 
tion to  dissolve.  Broadwell  v.  Long,  164  0.  G.  252,  36 
App.  D.  C.  418. 

247a.  Questions  Presented  for  the  First  Time  on  Ap- 
peal. Only  questions  presented  below  will  be  considered 
on  appeal.  McFarland  v.  Watson,  146  0.  G.  257,  33 
App.  D.  C.  445 ;  Lacroix  v.  Tylerg,  150  0.  G.  267,  33 
App.  D.  C.  586;  Field  v.  Coleman,  193  0.  G.  221,  40 
App.  D.  C.  598  ;  Lnckett  v.  Strauh,  250  0.  G.  999  (1918). 

248.  Assignment  of  Errors — Scope  of.  On  an  appeal 
to  the  Examiners  in  Chief  from  a  decision  of  the  Exam- 
iner of  Interferences,  an  assignment  of  error  which  as- 
sails the  decision  of  the  Examiner  of  Interferences  in 
awarding  priority  on  the  whole  case  to  the  opposing 
party  is  sufficient  to  preserve  the  appellant's  right  to 
argue  the  question  of  res  adjudicata  by  reason  of  a  judg- 
ment in  a  prior  interference.  Carroll  v.  Halwood,  135 
O.  G.  896  (1908),  31  App.  J).  C.  165. 

Amendment  of  Assignment  of  Errors.  No  provision  is 
made  in  either  the  Court  Rules  or  the  Rules  of  the  Pat- 

146 


ent  Office  for  Mraendment  of  assignment  of  errors,  but 
amendment  may  be  permitted  upon  a  proper  showing, 
where  no  injury  eoukl  be  done  the  opposing  party. 
Horine  v.  Wende,  129  0.  G.  2858  (1907),  29  App.  D.  C. 
415. 

249.  Reversal  on  Question  of  Fact.  Where  the  con- 
current decisions  of  the  Patent  Office  are  the  same  on  a 
question  of  fact,  it  is  necessary  for  the  appellant  to  make 
out  a  clear  case  of  error  to  obtain  a  reversal.  If  it  be 
left  in  doubt  whether  the  ruling  below  is  correct,  the  de- 
cision will  be  affirmed.  Ries  v.  Jehsen,  132  0.  G.  845 
(1907),  30  App.  D.  C.  199;  Hotvard  v.  Hey,  95  0.  G. 
1647,  18  App.  D.  C.  142 ;  Swihart  v.  Mauldin,  99  0.  G. 
2332,  19  App.  D.  C.  570;  Flora  v.  Poivrie,  109  0.  G. 
2443,  23  App.  D.  C.  195.  The  court  is  not  bound  to  af- 
firm a  case  because  the  decisions  below  have  been  uni- 
form. 0' Council  v.-Schm,tdt,  122  0.  G.  2065  (1906),  27 
App.  D.  C.  77 ;  Woodlridge  v.  Winship,  145  0.  G.  1250, 
33  App.  D.  C.  490 ;  Gold  v.  Gold,  150  0.  G.  570,  34  App. 
D.  C.  229 ;  Derr  v.  Gleason,  264  0.  G.  864,  258  Fed.  969. 

250.  Reversal  on  Questions  of  Law.  While  the  deci- 
sions of  the  Patent  Office  on  questions  of  fact  will  ordi- 
narily be  followed,  such  is  not  the  rule  where  matters  of 
law  are  involved.  Orcutt  v.  McDonald,  Jr.,  123  0.  G. 
1287  (1906),  27  App.  D.  C.  228  ;  Bourn  v.  Hill,  123  0.  G. 
1284  (1906),  27  App.  D.  C.  291. 

251.  The  Record  on  Appeal.  The  court  will  not  con- 
sider affidavits  filed  either  in  the  court  or  in  the  Patent 
Office,  relating  to  changes  that  may  have  occurred,  in 
drawings,  models,  or  exhibits  and  the  like,  after  the 
same  have  been  introduced  in  evidence,  and  has  pointed 
out  that  to  guard  against  such  possibility  parties  should 
describe  exhibits  at  the  time  they  are  introduced  in  evi- 
dence. If  any  corrections  are  to  be  made  in  the  record 
they  should  be  made  in  the  Patent  Office  before  the  rec- 
ord is  certified  to  the  Court  of  Appeals.  Blackford  v. 
Wilder,  104  0.  G.  580  (1903),  21  App.  D.  C.  1;    Green- 

147 


wood  V.  Dover,  109  0.  G.  2172,  23  App.  D.  C.  251.  "Where 
the  decision  of  the  Patent  Office  is  based  on  testimony 
not  in  the  record  on  appeal,  it  must  be  assumed  that  the 
decision  below  was  correct.  Goldberg  v.  Halle,  151  0.  6. 
452,  34  App.  D.  C.  183.  The  record  made  by  a  party  not 
appealing  will  not  be  considered  on  appeal..  Bichards  v. 
Meissner,  114  0.  G.  1831. 

Where  error  in  suppressing  testimony  is  alleged,  the 
suppressed  testimom-  must  be  made  a  part  of  the  record. 
Jones  V.  Sfarr.  117  6.  G.  1495.  26  App.  D.  C.  64.  ' 

252.  Extending  Time  for  Filing  Record.  The  Com- 
missioner may  not  extend  time  for  giAing  notice  of  ap- 
peal, but  he  may  extend  the  time  for  filing  the  transcript 
of  the  record.  In  Clements  v.  Richards,  111  0.  G.  1626, 
it  was  held  that  the  Commissioner  has  no  authority  to 
extend  the  limit  of  appeal  to  the  Court  of  Appeals,  as 
that  is  fixed  by  the  rules  of  the  court. 

253.  Appeals  to  the  Commissioner.  Appeals  to  the 
Commissioner  in  Interferences  are  permissible  under 
Rules  124,  139  and  143.  Regulations  respecting  the  pres- 
entation of  .such  appeals  are  provided  in  Rules  141.  145 
and  146.  In  general  a  party  may  appeal  from  a  judg- 
ment against  him  on  priority  of  invention.  Certain  ques- 
tions have  arisen  in  interferences  and  which  have  been 
designated  in  various  decisions  as  questions  ancillary  to 
that  of  priority.  The  questions  which  have  been  con- 
sidered by  the  Court  of  Appeals.  D.  C.  as  ancillary  to 
priority,  are  r-'ferred  to  elsewhere  under  Relevant  Testi- 
mony, Sec.  192.  Such  questions  having  been  taken  into 
consideration  by  the  court  as  properly  relating  to  pri- 
ority of  invention,  they  may  be  presented  to  the  various 
tribunals  of  the  Patent  Office  and  appeal  taken  to  the 
Commissioner  from  adverse  rulings  thereon  by  the  Ex- 
aminers in  Chief.  But  the  jurisdiction  of  the  Commis- 
sioner being  more  extensive  than  that  of  the  Court  of 
Appeals,  D.  C,  he  may  take  into  con.sideration  on  ap- 
l)eal  matters  which  will  not  be  considered  by  the  court. 

148 


J^'ur  tlio  sake  of  orderly  procedure  tlie  CoDimissioiier, 
with  tlie  ai)pr()val  ot"  Ihe  Secretary  of  the  Interior,  lias 
promulgated  the  Rules  of  Practice  in  which  provision  is 
made  for  appeals  on  certain  (juestions  and  the  right  of 
appeal  denied  as  to  others.  The  rules  are  designed  to  be 
in  strict  accordance  with  the  Revised  Statutes  relating 
to  the  grant  of  patents.  Questions  which  are  appealable 
under  the  rules  should  be  presented  by  appeal  in  con- 
formity with  such  rules,  but  where  a  party  desires  to 
present  to  the  Commissioner  a  question  on  which  the 
rules  do  not  provide  for  appeal,  he  must  do  so  by  peti- 
tion.    (See  Petitions.) 

254.  Patentability  of  the  Issue.  On  appeals  on  prior- 
ity, the  patentability^  of  the  issue  will  be  considered  only 
under  extraordinary  circumstances  which  will  warrant 
the  exercise  of  the  ^ipervisory  authority  of  the  Commis- 
sioner to'  correct  a  manifest  error.  Lacroix  v.  Tyherg, 
148  0.  G.  831  fl908)  ;  Dixon  (&  Marsh  v.  Graves,  130  0. 
G.  2374  (1907)  ;  Sorrell  v.  Donnelly,  129  0.  G.  2501 
(1907)  ;  Potter  v.  Mcintosh,  122  0.  G.  1721  (1906)  ; 
SoUy  V.  Holschlaw,  119  0.  G.  1922  (1905). 

Where  the  Examiners  in  Chief  recommend  under  Rule 
126,  that  the  issue  is  not  patentable,  the  Commissioner 
will  not  pass  upon  the  patentability  of  the  issue  at  this 
stage  of  the  proceedings,  but  may  suspend  the  interfer- 
ence and  remand  the  question  to  the  Primary  Examiner, 
from  whose  decision  an  appeal  may  be  taken  as  in  other 
eases.  Rule  126.  Sorrell  v.  Donnelly,  129  0.  G.  2501 
(1907).  Where  the  Examiner  of  Interferences  or  the 
Examiners  in  Chief  refuse  to  make  any  recommendation 
under  Rule  126,  such  refusal  will  not  be  reviewed  on 
appeal.    Wert  v.  Borst,  122  0.  G.  2062  (1906). 

255.  Petitions  in  Interferences.  It  is  well  settled  that 
a  matter  will  not  be  considered  on  petition  if  the  rules 
provide  adequate  remedies  b}^  appeal.  An  aggrieved 
party  must  follow  the  regular  course  of  procedure  pro- 
vided by  the  rules  and  should  only  invoke  the  supervi- 

149 


sory  authority  of  the  Commissioner  under  circumstances 
where  he  has  no  other  remedy  and  in  a  clear  case.  Brown 
V.  Gammctcr,  132  0.  G.  679  (1908)  ;  Cazi7i,  20  Gour. 
86-15  (Dec,  1908)  ;  Niiman  v.  Ashley,  175  0.  G.  1098 
(1912). 

256.  Right  of  Appeal  Denied — In  What  Cases.  No  ap- 
peal lies  where  the  rules  specifically  provide  that  a  ques- 
tion is  not  appealable.  And  it  has  been  held  that  where 
a  motion  to  amend  the  issue  is  denied  because  the  op- 
posing party  can  not  make  the  claim,  no  appeal  lies  to 
the  Commissioner.  Stronach  v.  Shaw,  192  0."  G.  989 
(1913)  ;  Mortimer  v.  Thomas,  192  0.  G.  215  (1913)  ;  or 
from  a  decision  which  would  not  constitute  a  ground  for 
rejecting  the  claims  in  the  application  of  the  moving 
party  after  the  termination  of  the  interference.  3Iorti- 
mer  v.  Thomas,  192  0.  G.  215  (1913^).  Or  where  a  mo- 
tion to  dissolve  an  interference  is  based  on  the  ground 
of  irregularity  in  declaring  the  same  because  of  the  al- 
leged inoperativeness  of  the  opposing  party's  structure. 
8eacoml)e  v.  Burks,  182  0.  G.  973  (1912).  Or  the  grant- 
ing of  a  motion  to  add  counts  under  Rule  109.  Leonard 
V.  Pardee,  164  0.  G.  249  (1911).  Degen  v.  Pfadt,  133 
0.  G.  514  (1908).  Or  from  a  decision  of  the  Primary 
Examiner  as  to  the  sufficiency  of  a  notice  as  to  matters 
not  of  record  which  are  to  be  presented  at  the  hearing 
on  motion  to  dissolve,  except  in  cases  of  abuse  of  discre- 
tion. Thieme  v.  Bowen,  21  Gour.  70-13  (Aug.,  1909). 
Or  upon  the  admissibility  of  affidavits  filed  with  a  mo- 
tion to  dissolve,  if  no  appeal  lies  from  the  decision  on 
the  motion  to  dissolve.  Brown  v.  Inwood,  131  0.  G. 
1423  (1907).  Or  from  a  decision  of  the  Examiner  of 
Interferences  extending  time  for  taking  testimony,  nor 
will  the  question  be  considered  on  y)ctition,  except  in  a 
clear  case  of  abuse  of  discretion.  WiT^kers  v.  Weiniuiirm, 
]29  0.  G.  2501  (.1907).  Or  the  granting  of  a  motion  to 
lake  testimony  nbroad.  Krith  v.  Lundquist,  128  0.  G. 
2835  (1907).     Or  from  a  decision  denying  a  motion  to 

150 


take  testimony  as  to  the  operativeiiess  of  an  opponent's 
device,  pending  a  motion  to  dissolve  the  interference. 
Barber  v.  Wood,  127  O.  G.  1991  (1907).  Or  from  a 
decision  of  the  Examiner  of  Interferences  on  a  motion 
to  shift  the  burden  of  proof,  though  the  question  will  be 
considered  on  final  hearing  on  priority.  Dukesmith  v. 
Corrington,  125  0.  G.  348 ;  Hewitt  v.  Thomas,  et  al.,  122 
0.  G.  1045  (1906)  ;  McGill  v.  Adams,  119  0.  G.  1924 
(1905);  Loivrij  v.  Spoon,  14  Gour.  52-7  (July,  1902). 
Or  from  a  decision  of  the  Examiner  of  Interferences  re- 
fusing to  require  a  party  to  file  a  supplemental  oath. 
Dukesmith  v.  Corrington,  125  0.  G.  348  (1906).  Or  the 
refusal  of  the  Examiner  of  Interferences  to  grant  a  re- 
hearing, thougli  the  right  to  a  rehearing  may  be  con- 
sidered on  appeal  on  the  entire  record.  Hewitt  v. 
Thomas,  et  al.,  122  0.  G.  1045  (1906)  ;  Dinibar  v.  Schel- 
lenger,  121  0.  G.  2663  (1906).  Or  from  the  granting  or 
denying  of  a  motion  to  extend  time  for  filing  a  prelim- 
inary statement  except  where  there  is  an  abuse  of  dis- 
cretion. Ohmer  v.  Neth,  118  0.  G.  1686  (1905).  Or 
from  a  decision  of  the  Examiners  in  Chief  reversing  a 
decision  of  the  Primary  Examiner  rejecting  a  count  of 
the  issue  and  refusing  to  dissolve  the  interference  as  to 
that  count.  Coleman  v.  Bullard  v.  StrnMe,  114  0.  G. 
973.  Or  from  a  favorable  decision  of  the  Examiner  ren- 
dered on  a  motion  to  dissolve  as  to  the  sufficiency  of  an 
affidavit  filed  under  Rule  75.  McChesley  v.  Kruger,  101 
0.  G.  219 ;  1902  C.  D.  349 ;  Bijron  v.  Maxwell,  105  0.  G. 
499  (1903).  Or  from  a  refusal  of  the  Examiner  to  re- 
hear a  motion  to  dissolve.  Macy  v.  Laning,  101  0.  G. 
1608 ;  1902  C.  D.  399.  Or  from  a  decision  of  the  Exam- 
iner denying  a  motion  to  amend  under  Rule  109,  since 
appeal  in  such  case  is  to  the  Board.  Hillard  v.  Eckert, 
101  0.  G.  1831;  1902  C.  D.  413. 

257.  Right  to  Make  the  Claims  and  Patentability  of 
the  Issue.  No  appeal  lies  to  the  Commissioner,  inter 
partes,  from  a  favorable  decision  of  the  Law  Examiner 

151 


on  the  patentability  of  the  issue  or  the  right  to  make 
the  claims.  The  Commissioner  will  interfere  in  such 
cases  only  to  correct  an  error  which  is-elear  and  evident. 
Medermciicr  v.  M^aliou,  98  0.  G.  1707;  1902  C.  D.  56; 
MiskoJczij  V.  GlehsattcU  13  Gour.  19-6  (Apr.,  1901)  ; 
Kcmpshall  v.  SeiherUufj,  104  O.  G.  1395  (1903)  ;  Fallcr 
V.  Lorimer,  14  Gour.  50-2  and  3  (July,  1902)  ;  Whipple 
V.  Sharp,  14  Gour.  66-2  (Sept.,  1902);  Lammers  v. 
Weinwurm,  15  Gour.  66-2  (Sept.,  1903).  Notwithstand- 
ing numerous  decision  to  the  same  effect,  parties  have 
persisted  in  many  cases  covering  a  period  of  years  in 
such  attempted  appeals  to  the  Commissioner.  If  upon 
motion  to  dissolve  on  the  ground  that  a  party  has  no 
right  to  make  the  claims,  it  is  held  that  he  has  a  right  to 
make  the  claims,  the  party  who  is  defeated  on  the  mo- 
tion need  not  appeal  from  such  interlocutory  judgment, 
but  he  may  present  the  same  question  for  review  before 
the  Examiner  of  Interferences,  before  the  Examiners  in 
Chief,  before  the  Commissioner,  and  the  Court  of  Ap- 
peals, D.  C,  as  a  question  ancillary  to  that  of  priority. 
If  the  motion  is  sustained  and  the  interference  dissolved, 
there  is  then  no  question  of  priority  to  be  determined  be- 
cause it  has  already  been  held  that  one  of  the  parties  has 
no  right  to  make  the  claims  and  this  holding  is  equiva- 
lent to  saying  that  he  never  invented  the  issue  and  is 
therefore  not  entitled  to  a  patent.  Under  the  present 
Eule  124  he  may  appeal  inter  partes  to  the  Examiners  in 
Chief  and  from  the  Board  he  may  appeal  to  the  Com- 
missioner. If  the  Commissioner  holds  that  he  has  no 
right  to  make  the  claims,  he  can  appeal  no  farther  inter 
partes,  but  he  has  a  right  to  further  prosecute  his  appli- 
cation and  if  his  claims  are  rejected  and  patent  refused, 
lie  has  a  statutory  right  to  appeal  through  the  various 
tribunals  of  the  Patent  Office  to  the  Court  of  Appeals, 
D.  C.  If  he  finally  sustains  his  right  to  make  the  claims, 
the  question  of  priority  will  again  become  an  issue. 
Where  a  motion  to  dissolve  on  the  ground  tliat  the 
152 


issue  is  not  ])al('ntal)l('  is  denied,  lut  appeal  lies  because, 
first,  Rule  124  provides  that  no  appeal  lies  from  such  de- 
cision, and,  second,  because;  whether  the  issue  is  patent- 
al)le  is  a  matter  between  tiie  applicants  and  the  office  and 
is  not  a  matter  of  controversy  between  the  parties.  If 
tiie  interference  is  dissolved  upon  this  ground,  the  party 
who  makes  the  motion  confesses  thereby  that  he  is  not 
entitled  to  a  patent,  but  the  other  party  may  appeal  inter 
partes  to  the  Examiners  in  Chief,  and  from  them  to  the 
Commissioner.  It  may  seem  that  there  is  no  valid  reason 
for  inter  partes  appeals  in  such  cases,  as  provided  in 
Rule  324,  but  it  may  be  deemed  advisable  that  the  mov- 
ing party  be  heard  for  the  assistance  of  the  office,  as  was 
held  in  Grimh  r.  Dodgson,  116  0,  G.  1731  (1905)  ;  Lipe 
V.  Miller,  109  0.  G.  1608;  Eohhins  v.  Titus,  111  0.  G. 
584;  Patterson  v.  Neher,  192  0.  G.  215  (1913).  What- 
ever may  be  the  reason  for  the  provision,  it  is  sufficient 
that  the  rule  now  in  force  so  provides.  It  should  be  re- 
membered that  interlocutory  motions,  such  as  motions  to 
dissolve,  are  creatures  of  the  Rules  of  Practice  of  the 
Patent  Office,  ami  the  rights  of  parties  thereunder  are 
not  statutory  rights,  and  where  on  such  motions,  which 
can  be  carried  no  farther  than  the  Commissioner,  the 
issue  is  held  not  patentable,  the  party  has  still  the  right 
to  insist  in  the  further  ex  parte  prosecution  of  his  ap- 
plication that  the  claims  are  patentable,  and  if  his  appli- 
cation is  rejected  for  the  reason  that  the  claims  are  not 
patentable  he  has  a  statutory  right  of  appeal  to  the 
various  tribunals  of  the  Patent  Office  and  finally  to  the 
Court  of  Appeals,  D.  C,  and  thus  he  has  had  two  series 
of  appeals  within  the  office  on  the  patentability  of  the 
issue  and  finally  a  decision  of  the  Court  of  Appeals  there- 
on. As  a  practical  matter  it  might  be  assumed  that  in 
the  ex  parte  appeals,  the  decisions  in  the  interference 
would  be  followed,  but  by  this  means  he  would  finally 
secure  a  decision  of  the  Court  of  Appeals  on  this  ques- 
tion. 

153 


FORMS 

IN  THE  UNITED  STATES  PATENT  OFFICE. 

Kobert  A.  Jones, 
Counterbalanced  Crank  Shaft, 
Filed  March  6,  1918, 
Serial  No.  120,256. 
Commissioner  of  Patents, 
Sm: 

Affidavit  of  Priority. 
State  of  Michigan, 


•^] 


ss . 
County  of  Wayne, 

Now  comes  Robert  A.  Jones,  the  above-named  appli- 
cant, and  states  that  prior  to  January  5,  1917,  the  date 
of  the  filing  of  the  application  which  matured  into  U.  S. 

Patent  No ,  issued  February  5,  1918,  to  George 

A.  Allen,  the  said  applicant  disclosed  to  others  the  in- 
vention described  and  claimed  in  his  pending  applica- 
tion, and  had  made  working  drawings  thereof;  that 
thereafter  and  long  prior  to  the  said  filing  date  of  Janu- 
ary 5,  1917,  the  said  applicant  had  a  motor  constructed 
including  a  counterbalanced  crank  shaft  which  was  made 
in  accordance  with  the  drawings  of  the  application  herein 
involved ;  that  in  said  counterbalanced  crank  shaft  there 
were  counterweights  fixed  securely  thereto,  each  in  sub- 
stantial opposition  to  the  off-center  parts  of  the  crank 
shaft  which  the  counterweights  were  to  counterbalance, 
said  counterweights  and  crank  shaft  being  formed  with 
shoulders  which  engaged  and  opposed  that  movement  of 
the  coimterweights  relative  to  the  crank  shaft  which 
centrifugal  force  tends  to  produce;  that  in  said  crank 
shaft  a  counterweight  was  fixedly  secured  between  the 
crank  arms  of  said  crank  shaft  by  two  arms  which  strad- 

154 


died  tlie  inner  end  oL'  tlie  crank  arm  and  were  formed 
with  inwardly  projecting  lugs,  the  said  crank  arm  hav- 
ing outwardly  projecting  lugs  whicli  respectively  en- 
gaged the  lugs  on  the  two  arms  of  the  counterweight  and 
opposed  that  movement  of  the  counterweight  relative  to 
the  crank  shaft  which  centrifugal  force  tends  to  produce ; 
that  said  shaft  in  addition  to  these  inter  engaging  shoul- 
ders of  the  counterweight  and  shaft  also  was  welded  to 
the  counterweight  at  the  crank  arm. 

Deponent  further  states  that  said  motor  was  put  into 
actual  use  after  a  test  and  has  been  sold  and  is  now  in 
use  commercially;  that  said  test  and  actual  use  of  the 
motor  took  place  prior  to  the  filing  date  of  the  Allen 

Patent,  No ,  constituting  a  reference  against 

the  applicant's  claims. 

Subscribed  and  sworn  to  before  me,  a  Notary  Public, 
this daj^  of 

Notary  Public. 
My  Commission  Expires. 

IN  THE  UNITED  STATES  PATENT  OFFICE. 

John  Fitch        "^ 

vs.  >     Interference  No 

Egbert  Fulton.  J 

Motion  to  Amend  the  Issue. 
Now  comes  Robert  Fulton,  by  his  attorney,  and  moves 

to  amend  his  application,  serial  No ,  involved 

in  the  above  entitled  interference,  by  adding  thereto  the 
following  j)roposed  claims : 
(Here  insert  the  claims  it  is  desired  to  have  entered.) 
The  foregoing  claims  are  believed  to  be  patentable, 
properly  to  describe  the  means  disclosed  by  all  parties 
and  are  deemed  necessary  to  be  counts  of  the  interference 
in  order  that  the  question  of  priority  respecting  all  pat- 

155 


entable  means  coninion  to  the  parties  may  l)e  adjudicated. 

An  amendment  entitled  in  said  ap])lieation  and  eoii- 
taining:  the  said  proposed  claims  is  filed  lierewith. 

( If  the  proposed  claims  are  copied  from  the  applica- 
tion of  another  party,  so  state  and  identify  them  by  their 
ordinals  in  that  application.) 

(If  the  proposed  amendment  is  for  the  purpose  of  pro- 
curing another  interference,  as  with  a  divisional  appli- 
cation of  one  of  the  opposing  parties,  adjust  the  phrase- 
ology accordingly.) 


Attorney  for  Robert  Fulton. 

IN  THE  UNITED  STATES  PATENT  OFFICE. 

John  Fitch,        ^ 

vs.  y     Interference  No 

Robert  Fulton.  J 

Motion  to  Substitute  an  Application. 

Now  comes  John  Fitch,  by  his  attorney,  and  moves  that 

his  application,  Serial  No be  substituted  for 

application,  Serial  No.    . ,  now  included  in  the 

above  entitled  interference.  It  is  believed  that  the  counts 
of  the  issue  properly  describe  the  means  disclosed  in  the 
said  application  it  is  desired  to  substitute. 

(If  the  moving  party  is  an  assignee  and  the  applica- 
tion desired  to  be  substituted  is  one  of  an  inventor  other 
than  he  whose  application  is  already  included,  corre- 
sponding changes  in  the  phraseology  should  be  made.) 


Attorney  for  John  Fitch. 

IN  THE  UNITED  STATES  PATENT  OFFICE. 
John  Doe       "^ 

vs.  y      Intci'ference  No 

Peter  Smith.  J 

Ticforc  the  Examiner  of  Interferences. 
156 


Motion  to  Extend  Time  for  Filing  Preliminary  Statement. 
Now  comes  Jolm  Doe,  one  of  the  parties  to  the  above 
entitled  interference,  by  his  attorney,  and  moves  that  his 
time  for  filing  his  preliminary  statement  herein  be  ex- 
tended for  a  period  of  twenty  days  from  Jan,  10,  1919. 
The  reasons  for  asking  said  extension  are  set  forth  in  the 
attached  affidavit  of  John  Doe,  and  are  as  follows :  (Here 
state  the  reasons.)     (See  Rule  104.) 


Attorney  for  John  Doe. 

Note :  One  postponement  of  time  for  filing  prelim- 
inary .statements  can  ordinarily  be  secured  b}'  simple  ex 
parte  request. 

Further  postponements  must  usually  be  had  by  motion 
or  stipulation. 

A  copy  of  the  motion  and  notice  of  hearing  .should  be 
served  on  opposing  counsel,  and  proof  of  service  filed. 

(Title  of  case.) 

BEFORE  THE  EXAMINER  OF  INTERFERENCES. 
Motion  to  Amend  Preliminary  Statement. 

And  now  comes  the  party,  John  Doe,  by  his  attorney, 
and  moves  that  he  be  permitted  to  amend  his  prelim- 
inary statement,  now  on  file,  in  accordance  with  the  pre- 
liminary statement  submitted  herewith,  and  in  support 

of  this  motion  files  the  attached  affidavit  of , 

setting  forth  the  reasons  for  asking  said  permission  to 
amend,  which  are  as  follows :     (Set  out  the  reasons.) 

It  is  further  moved  that  all  other  proceeding  in  this 
interference  be  stayed  pending  the  determination  of  this 
motion. 


Attorney  for  John  Doe. 

Note :     As  to  the  character  of  showing  required  in  the 
atfidavit  to  accompany  this  motion,  see  Sec.  47. 

157 


A  copy  of  the  motion  (including  the  affidavit)  and 
notice  of  hearing,  should  be  served  on  the  other  parties. 

Proof  of  service  and  notice  of  hearing  should  accom- 
pany the  motion. 

IN  THE  UNITED  STATES  PATENT  OFFICE. 
John  Fitch         "^ 

vs.  >     Interference  No 

Egbert  Fulton,  j 

Motion  to  Dissolve  Tinder  Rule  122. 

Now  comes  John  Fitch,  by  his  attorney,  and  moves  to 
dissolve  the  above-entitled  interference  for  the  reasons : 

1.  That  there  has  been  such  informality  in  declaring 
the  interference  as  will  preclude  the  proper  determina- 
tion of  the  question  of  priority  of  invention. 

2.  That  the  means  defined  in  the  several  (or  specified) 
counts  of  the  issue  is  not  patentable. 

3.  That  the  party  Fulton  has  no  right  to  make  the 
claims  corresponding  to  the  several  (or  specified)  counts 
of  the  issue. 

In  support  of  the  foregoing  motion  and  with  respect 
to  reason  1,  it  will  be  shown  (Here  state  what  the  infor- 
mality is  that  will  be  relied  on,  which  must  be  a  fact  or 
facts  independent  of  those  relied  on  to  support  reasons 
2  and  3). 

With  respect  to  reason  2  it  will  be  contended  that  all 
of  the  counts  (or  certain  specified  counts)  define  means 
that  are  (here  state  the  facts  that  are  deemed  to  establish 
want  of  patentability;  citing  by  name,  date  and  num- 
ber any  patent  deemed  to  be  an  anticipation  or,  if  the 
several  counts  or  any  of  them  are  deemed  to  cover  aggre- 
gations, or  mere  substitutions  or  equivalents  in  old  com- 
binations, si)ocifying  the  aggregated  or  substituted  parts, 
and  citing  prior  patent  or  publications  to  show  that  the 
parts  or  equivalent  elements  were  known  in  the  prior 
art.    The  facts  relied  on  must  be  set  forth  with  sufficient 

158 


particularity  to  enable  the  opposing  party  to  prepare  a 
defense  and  they  must  be  different  from  facts  relied  on 
to  support  grounds  1  and  3.    See  Sec.  66). 

With  respect  to  reason  3,  it  will  be  contended  that 
(Here  set  forth  the  facts  relied  on,  as  that  the  specifica- 
tion and  drawing  of  the  opposing  party  does  not  disclose 
a  specified  element  of  one  or  all  of  the  counts,  or  that  the 
disclosure  is  incomplete,  or  the  means  are  inoperative 
and  why ;  or  that  the  patent  is  barred  by  a  specified  for- 
eign patent  to  the  same  party,  filed  more  than  twelve 
months  prior  to  the  filing  of  the  U.  S.  application.  The 
facts  to  support  ground  3  must  be  different  from  those 
given  in  support  of  grounds  1  and  2). 


Attorney  for  John  Fitch. 

Proof  of  service  must  be  filed  with  all  motions  under 
Rules  109  and  122. 

(Title  of  Case.) 
Motion  to  Extend  Time  for  Taking  Testimony. 

And  now  comes  John  Doe,  by  his  attorney,  and  moves 
that  the  time  for  taking  his  testimony  in  chief  be  extend- 
ed thirty  days,  and  that  the  remaining  dates  and  final 
hearing  be  correspondingly  extended. 

The  reasons  for  requesting  said  extension  are  set  forth 

in  the  accompanying  affidavit  of ,  and  are 

as  follows :    (Here  state  the  reasons.) 

It  is  further  moved  that  all  other  proceedings  be 
stayed  pending  the  determination  of  this  motion.  (This 
paragraph  may  be  omitted  if  there  are  no  other  proceed- 
ings to  be  stayed.) 


Attorney  for  John  Doe. 

Note :    Hearings  can  also  be  postponed  and  sometimes 
advanced  b}'  similar  motion. 

159. 


Limit  of  appeal  can  be  extended  by  similar  motion  if 
made  before  limit  expires. 

A  copy  of  the  motion  (including  affidavit)  and  notice 
of  hearing-  should  be  served  on  all  other  parties. 

Proof  of  service  and  notice  of  hearing  should  accom- 
pany the  motion  when  filed. 

(Title  of  Case.) 

BEFORE  THE  EXAMINER  OF  INTERFERENCES. 

Motion  to  Use  Testimony  Taken  in  Another  Interference. 

And  now  comes  John  Doe,  by  his  attornej",  and  moves 
that  he  be  permitted  to  use  as  a  part  of  the  evidence  in 
the  above-entitled  interference  the  testimony  taken  in 

interference  No. ,  Brown  v.  Evans  (or  if  not 

all  the  testimony  is  to  be  used,  specify  the  witnesses 
whose  testimony  is  desired),  subject  to  the  right  of  the 
other  parties  herein  to  recall  said  witnesses,  or  to  take 
other  testimony  in  rebuttal  thereof. 

The  reason  for  using  said  testimony  is  set  forth  in  the 

accompanying  affidavit  of  ,  and  is  as 

follows:   (Here  state  the  reasons.) 

It  is  further  moved  that  all  other  proceedings  be  stayed 
pending  the  determination  of  this  motion. 


Attorneri  for  John  Doe. 

Note :  It  should  be  stated  in  the  affidavit  how  the  tes- 
timony sought  to  be  used  is  relevant  and  material. 

A  copy  of  the  motion  and  notice  of  hearing  should  be 
served  on  all  other  parties. 

Proof  of  service  and  notice  of  hearing  should  be  filed 
with  the  motion. 


160 


(Title  of  Case.) 
BEFORE  THE  EXAMINER  OF  INTERFERENCES. 

Motion  to  Take  Special  Testimony. 
And  now  eoincs  John  Doc,  by  his  attorney,  and  moves 
that  he  be  permitted  to  take  testimony  to  prove  that  the 
device  disclosed  in  the  application  of  Peter  Smith,  is  in- 
operative, and  is  not  such  a  disclosure  as  is  re(iuired  by 
the  statute. 

The  reason   i'or  asking  permission  to  take  said  testi- 
mony is  set  fortii  in  the  accompanying'  affidavit  of 

,  and  is  as  follows  :     (Here  set  out  the  reason.) 

It  is  further  moved  that  all  other  proceedings  herein 
be  stayed  pending  the  determination  of  this  motion. 


Attorney  for  John  Doe. 

Note :  Inoperativeness  goes  to  the  right  to  make  the 
claims  and  a  motion  to  dissolve  on  that  ground  should 
first  be  made.  As  to  character  of  showing  required,  see 
Sec.  165. 

A  cop3^  of  the  motion  and  notice  of  hearing  should  be 
served  on  all  other  parties. 

Proof  of  service  and  notice  of  hearing  should  be  filed 
with  the  motion. 

(Title  of  Case.) 
BEFORE  THE  EXAMINER  OF  INTERFERENCES. 

Motion  to  Shift  the  Burden  of  Proof. 
And  now  comes  John  Doe,  by  his  attorney,  and  moves 
that  the  burden  of  proof  in  this  interference  be  shifted 
to  the  senior  party,  Smith. 

The  reason  the  burden  of  proof  should  be  so  shifted  is 
as  follows : 

(Here  set  forth  the  reasons  relied  upon.) 


Attorney  for  John  Doe. 
13  161 


A  copy  of  the  motion  and  notice  of  hearing  shouhl  be 
served  on  the  opposing  parties. 

Proof  of  service  and  notice  of  hearing  should  accom- 
pany the  motion  when  filed. 

IN  THE  UNITED  STATES  PATENT  OFFICE. 

Doe       ^ 

vs.       >     Interference  No 

Smith.  J 

BEFORE  THE  EXAMINER  OF  INTERFERENCES. 
Motion  to  Take  Testimony  Abroad. 

Now  comes  the  party  Doe,  by  his  attorney,  and  moves 
that  in  accordance  with  Rule  158,  a  commission  be  issued 
to  the  United  States  Consul  at  Manchester,  England,  to 
take  the  depositions  of  John  Brown,  of  Number  27  Wood- 
ley  Street,  Manchester,  England,  and  of , 

in  behalf  of  John  Doe,  under  interrogatories  and  cross- 
interrogatories  to  be  filed  by  the  attorneys  for  the  parties 
Doe  and  Smith,  respectively. 

The  particular  facts  to  which  it  is  expected  the  said 

Brown  and will  testify  are :     (Here  set 

out  the  facts.)  The  affidavit  of  John  Doe  is  filed  here- 
with in  support  of  this  motion. 

It  is  further  moved  that  all  other  proceedings  in  this 
case  be  stayed  pending  the  determination  of  this  motion. 


Atiorney  for  Doe. 

Motion  papers  and  notice  of  hearing  should  be  served 
on  other  parties. 

Proof  of  service  and  notice  of  hearing  should  accom- 
pany motion  papers. 

Note :  To  have  this  motion  granted  proof  must  be  sub- 
mitted that  th'  amount  of  $100.00  has  been  deposited 
with  the  State  Department,  through  which  department 
tlx'  ])ap<'rs  arc  forwarded. 

]fJ2 


(Title  of  Case.) 

BEFORE  THE  EXAMINER  OF  INTERFERENCES. 
Motion  for  Judgment  on  the  Record. 

Comes  now  liobert  A.  Joues,  the  senior  party  to  the 
above-entitled  interference,  and  shows  to  the  Examiner 
of  Interferences  that  he  is  entitled  to  judgment  on  the 
record  herein  for  the  following  reasons : 

1.  That  by  the  provisions  of  j^our  order  of  November 
10,  1918,  the  junior  party,  Peter  Smith,  was  given  until 
February  15,  1919,  within  which  to  take  his  testimony  in 
chief  herein;  that  said  time  has  never  been  extended  by 
stipulation  or  otherwise  and  that  said  junior  party  has 
failed  and  refused  to  take  testimony  herein  prior  to  Feb. 
15,  1919,  or  at  all. 

Wherefore  the  said  senior  party  moves  for  judgment 
on  the  record  for  the  reasons  hereinbefore  stated. 


Attorncu  for  Robert  A.  Jones. 
State  of  Michigan, 


AN,   I 
NE,     J 


ss 
County  of  Wayni 

James  Bradford,  being  duly  sworn,  deposes  and  says 
that  he  is  attorney  for  Kobert  A.  Jones,  the  senior  party 
to  the  above-entitled  interference,  and  that  the  facts  set 
forth  in  the  foregoing  motion  are  true,  as  he  is  informed 
and  believes. 

Subscribed  and  sworn  to  before  me,  a  Notary  Public, 
this day  of 

Notary  PuMic. 

My  Commission  Expires 

Note :  A  copy  of  the  motion  and  notice  of  hearing 
should  be  served  on  the  other  party. 

Proof  of  service  and  notice  of  hearing  should  be  tiled 
with  the  motion. 

163 


For  decisions  on  motions  of  this  character,  see  Sees. 
237  to  241. 

BEFORE  THE  EXAMINER  OF  INTERFERENCES. 

Notice  of  Hearing. 

To  Messrs.  Bradford  (0  Bradford,  Attorneys  for  Peter 
Smith,  St.  Paul,  Bldg.,  Louisville,  Ky.: 

Please  take  notice  that  on  Monday,  November  3,  1919, 
at  10  o'clock  a.  m.,  or  as  soon  thereafter  as  counsel  can 
be  heard,  I  shall  present  to  the  Honorable  Examiner  of 
Interferences  the  accompanying  motion  to 


Attorney  for  John  Doe. 
Title  of  Case.) 


BEFORE  THE  EXAMINER  OF  INTERFERENCES. 
Proof  of  Service. 
State  of  Michiga 


IAN,     I 
NE,       j 


SS , 

County  of  Wayni 

James  Bradford,  being  duly  sworn,  deposes  and  says ; 
that  he  is  the  attorney  for  John  Doe  in  the  above  inter- 
ference ;  that  on  the  21st  day  of  November,  1919,  he  sent 
to  Messrs.  Thomas  &  Miller,  35  Williams-  Street,  New 
York  City,  attorneys  for  Peter  Smith,  a  true  copy  of  the 
annexed  notice  of  taking  testimony  by  depositing  the  said 
copy  in  the  registry  mail  department  of  the  general  post 
office  in  the  city  of  Detroit,  State  of  Michigan,  in  a  sealed 
envelope,  postage  prepaid,  and  addressed  to  the  said 
Thomas  &  Miller,  at  the  address  aforesaid,  registry  re- 
ceij^t  for  which  is  hereto  attached. 

Siil)sci'il)('(l  and  swoi'ii  to  before  me,  a  Notary  Public, 

this day  of 

My  Commission  Expires  on  the   day 


164 


(Title  of  Case.) 

BEFORE  THE  EXAMINER  OF  INTERFERENCES. 

Stipulation. 

It  is  hereby  stipulated  and  agreed  by  the  attorneys  for 
the  respective  parties  to  the  above  entitled  interference, 
the  Examiner  of  Interferences  consenting  thereto,  that 
the  several  dates  heretofore  set  for  the  taking  of  testi- 
mony, and  final  hearing,  may  be  extended  for  thirty 
davs. 


Aiioruf})  for  Joint  Doc. 
New  York,  N.  Y.,  Jan.  10,  1910. 


Attorney  for  Peter  Smith. 
Boston,  Mass.,  Jan.  12,  1910. 

Note :  Time  for  filing  preliminary  statements,  final 
hearing,  interlocutory  hearings  and  limit  of  appeal  can 
be  postponed  by  similar  stipulation. 


(Title  of  Case.) 

BEFORE  THE  EXAMINER  OF  INTERFERENCES. 

Motion  to  Dispense  With  Printing. 

And  now  comes  John  Doe,  one  of  the  parties  to  the 
above-entitled  interference,  by  his  attorney,  and  moves 
that  the  printing  of  his  testimony  in  this  interference  be 
dispensed  with  in  accordance  with  Rule  162,  for  the  fol- 
lowing reasons:  (Here  set  out  the  reasons)  and  he 
files  herewith  his  verified  statement  setting  forth  the  rea- 
sons for  dispensing  with  such  printing  of  the  record. 

(The  affidavit  in  support  of  the  motion  should  .set 
forth  the  financial  condition  of  the  moving  pavty  with 
such  particularity  as  to  show  that  he  is  umible  to  defray 
the  expense  of  printing  the  record.) 

165 


It  is  fiirtlier  luovod  tliat  ;ill  otlier  procoediiif>-s  in  tliis 
interference  be  stayed  i)endiii<i'  tlie  determination  of  this 
motion. 


Attorney  for  JoJm  Doe. 

Note :  A  copy  of  the  motion  and  notice  of  liearing 
should  be  served  on  all  other  parties. 

Proof  of  service  and  notice  of  hearing-  should  be  filed 
with  the  motion. 

Printing  of  the  record  may  be  dispensed  with  by 
stipulation,  if  approved  by  the  Commissioner. 

(Title  of  Case.) 

BEFORE  THE  EXAMINER  OF  INTERFERENCES. 

Motion  to  Consolidate. 

And  now  comes  John  Doe,  one  of  the  parties  to  the 
above  entitled  interference,  by  his  attorney,  and  moves 
that  this  interference  be  consolidated  with  interference 

No ,  vs , 

and  No , vs , 

and  that  said  interferences  be  tried  and  determined  as 
one  interference,  and  that  the  times  for  taking  testimony 
and  the  date  of  final  hearing  be  set  accordingly. 

The  reasons  for  consolidating  said  interferences  are  as 
follows  : 

(Here  state  clearly  why  the  interferences  should  be 
consolidated.) 

It  is  further  moved  that  all  other  proceedings  in  said 
interfei'cnces  be  stayed  ])ending  the  determiiuition  of  this 
motion. 


Atiorne\i  for  Joint  Doe. 


Note :     A  copy  of  the  motion  and  notice  of  hearing 
should  be  served  on  all  other  parties. 

KiG 


Proof  of  service  and  notice  of  iicarino'  should  be  filed 
with  the  motion. 

The  otifiee  aims  to  consolidate  interferences  when  pos- 
sible on  its  own  motion. 

Only  interferences  havinji'  the  same  parties,  in  the  same 
order,  and  with  closely  related  subject  matter  can  be 
consolidated. 

(Title  of  Case.) 

BEFORE  THE  EXAMINER  OF  INTERFERENCES. 

Motion  to  Suppress  Testimony, 

And  now  comes  John  Doe,  by  his  attorney,  and  moves 
that  certain  parts  of  the  testimom^  taken  by  Peter  Smith 
or  in  his  behalf  on  the  10th  day  of  Januarj^  1910,  at 
,  be  suppressed  and  not  considered  in  de- 
termining this  interference.  The  testimony  sought  to 
be  suppressed  is  as  follows : 

(Here  set  out  or  identify  particularly  the  testimony 
to  be  suppressed.) 

The  following  reasons  are  assigned  for  suppressing 
said  testimony,  to  wit : 

(Here  set  out  the  reasons  for  suppressing  the  testi- 
mony. ) 

It  is  further  moved  that  all  other  proceedings  in  this 
interference  be  stayed  pending  the  determination  of  this 
motion. 


Attorney  for  John  Doe. 


Note :  A  copy  of  the  motion  and  notice  of  hearing 
should  be  served  on  all  other  parties. 

Proof  of  service  and  notice  of  hearing  should  be  filed 
with  the  motion. 


167 


(Title  of  Case.) 

BEFORE  THE  EXAMINER  OF  INTERFERENCES. 

Petition  for  Rehearing. 

And  now  comes  John  Doe,  one  of  the  parties  to  the 
above  entitled  interference,  and  prays  that  the  Exam- 
iner of  Interferences  reconsider  his  decision  of  the 

day  of in  so  far  as  said  decision 

related  to  (Set  out  the  part  of  the  decision  to  which  ex- 
ception is  taken). 

The  grounds  upon  which  a  rehearing  is  asked  are  as 
follows:  (Set  out  the  various  points  to  be  considered, 
and  if  any  point  is  based  on  matters  not  in  the  record, 
an  affidavit  in  support  of  such  facts  should  accompany 
the  motion.) 

(If  the  rehearing  is  on  an  interlocutory  decision,  add :) 

It  is  further  moved  that  all  other  proceedings  herein 
be  stayed  pending  the  determination  of  this  motion. 


Aiiorney  for  John  Doe. 


This  is  an  ex  parte  matter.  No  notice  other  parties 
is  necessary.  If  granted  the  office  will  set  a  date  for 
hearing  and  notify  the  parties. 


108 


RULES  OF  PRACTICE 

IN  THE 

UNITED  STATES  PATENT  OFFICE. 

REVISED  JANUARY  1,   19J6. 


Since  January  1,  1916,  the  Rules  have  been  amended  as 

follows : 
Rule  12,  June  9,  1916. 
Rule  93,  June  5,  1917. 
Rule  77,  June  19,  1917. 
Rule  17,  July  31,  1918,  part  (h)  added. 
Court  Rule  XXI,  paragraph  4. 


CORRESPONDENCE  AND  INTERVIEWS. 

1.  All  business  with  the  office  should  be  transacted  in 
writing.  Unless  by  the  consent  of  all  parties,  the  action 
of  the  office  will  be  based  exclusively  on  the  written 
record.  No  attention  will  be  paid  to  any  alleged  oral 
promise,  stipulation,  or  understanding  in  relatioji  to 
which  there  is  a  disagreement  or  doubt. 

2.  All  office  letters  must  be  sent  in  the  name  of  the 
' '  Commissioner  of  Patents. ' '  All  letters  and  other  com- 
munications intended  for  the  office  must  be  addressed  to 
him;  if  addressed  to  any  of  the  other  officers,  they  will 
ordinaril}'  be  returned. 

3.  Express  charges,  freight,  postage,  and  all  other 
charges  on  matter  sent  to  the  Patent  Office  must  be  pre- 
paid in  full ;  otherwise  it  will  not  be  received. 

4.  The  personal  attendance  of  applicants  at  the  Patent 

169 


Office  is  unnecessar3\     Their  business  can  ])e  transacted 
by  correspondence. 

5.  The  assignee  of  the  entire  interest  of  an  invention 
is  entitled  to  hold  correspondence  with  the  office  to  the 
exclusion  of  the  inventor.     (See  Rule  20.) 

6.  When  there  has  been  an  assignment  of  an  undivided 
part  of  an  invention,  amendments  and  other  actions  re- 
quiring the  signature  of  the  inventor  must  also  receive 
the  written  assent  of  the  assignee ;  but  official  letters  will 
only  be  sent  to  the  post-office  address  of  the  inventor,  un- 
less he  shall  otherwise  direct. 

7.  When  an  attorney  shall  have  filed  his  power  of 
attorney,  duly  executed,  the  correspondence  will  be  held 
with  him. 

A  double  correspondence  with  the  inventor  and  an  as- 
signee, or  with  a  principal  and  his  attorney,  or  with  two 
attorneys,  can  not  generally  be  allowed. 

8.  A  separate  letter  should  in  every  case  be  written  in 
relation  to  each  distinct  subject  of  intpiir^-  or  applica- 
tion. Assignments  for  record,  final  fees,  and  orders  for 
copies  or  abstracts  must  be  seiit  to  the  office  in  separate 
letters. 

Papers  sent  in  violation  of  this  rule  will  be  returned. 

9.  When  a  letter  concerns  an  application,  it  should 
state  the  name  of  1;he  applicant,  the  title  of  the  invention, 
the  serial  number  of  the  application  (see  Rule  31),  and 
the  date  of  filing  the  same  (see  Rule  32). 

10.  When  the  letter  concerns  a  patent,  it  should  state 
the  nam(>  of  the  patentee,  the  title  of  the  invention,  and 
the  number  and  date  of  the  patent. 

11.  No  attention  will  be  paid  to  unverified  ex  parte 
statements  or  protests  of  persons  concerning  pending  ap- 
plications to  which  they  are  not  parties,  unless  informa- 
tion of  tjhe  pendency  of  these  applications  shall  have  been 
voluntary  communicated  by  the  applicants. 

12.  Mail  reaching  the  post  office  at  Washington,  D.  C, 
up  to  4.30  p.  m.,  on  week  days,  excepting  holidays,  and 

170 


1  |).  111.  on  hall"  liolidays,  is  entered  as  received  in  llie 
Patent  Office  on  the  day  it  reaches  the  post  office. 

Special-delivery  letters  and  other  papers  may  be  de- 
posited in  a  box  provided  at  the  watchman's  desk  at  the 
F  Street  entrance  of  the  Patent  Office  up  to  midniglit  on 
week-days,  includin<j  holidays,  and  all  papers  deposited 
therein  are  entered  as  received  in  the  Patent  Office  on  the 
day  of  deposit. 

Letters  received  at  the  office  v^^ill  be  answered,  and 
orders  for  printed  copies  filled,  without  unnecessary  de- 
lay. Telegrams,  if  not  received  before  3  o'clock  p.  m., 
can  not  ordinarily  be  answered  until  the  following  day. 

13.  Interviews  with  examiners  concerning  applications 
and  other  matters  pending  before  the  office  must  be  had 
in  the  examiners'  rooms  at  such  times,  within  office 
hours,  as  the  respective  examiners  may  designate,  in  the 
absence  of  the  primary  examiners,  with  the  assistant  in 
charge.  Interviews  will  not  be  permitted  at  any  other 
time  or  place  without  the  written  authority  of  the  Com- 
missioner. Interviews  for  the  discussion  of  pending  ap- 
plications will  not  be  had  prior  to  the  first  official  action 
thereon. 

INFORMATION  TO  COERESPONDENTS. 

14.  The  office  can  not  respond  to  inquiries  as  to  the 
novelty  of  an  alleged  invention  in  advance  of  the  filing 
of  an  application  for  a  patent,  nor  to  inquiries  pro- 
pounded with  a  view  to  ascertaining  whether  any  al- 
leged improvements  have  been  patented,  and,  if  so,  to 
whom ;  nor  can  it  act  as  an  expounder  of  the  patent  law, 
nor  as  counsellor  for  individuals,  except  as  to  questions 
arising  within  the  office. 

Of  the  propriety  of  making  an  application  for  a  pat- 
ent, the  inventor  must  judge  for  himself.  The  office  is 
open  to  him,  and  its  records  and  models  pertaining  to  all 
patents  granted  may  be  inspected  either  by  himself  or  by 
an}^  attorney  or  expert  he  may  call  to  his  aid,  and  its  re- 

171 


ports  are  widely  distributed.  (See  Rule  196.)  Further 
than  this  the  office  can  render  him  no  assistance  until  his 
case  comes  regularly  before  it  in  the  manner  prescribed 
by  law.  A  copy  of  the  rules,  with  this  section  marked, 
sent  to  the  individual  making  an  inquiry  of  the  character 
referred  to,  is  intended  as  a  respectful  answer  by  the  of- 
fice. 

Examiners'  digests  are  not  open  to  public  inspection. 

15.  Pending  applications  are  preserved  in  secrecy.  No 
information  will  be  given,  without  authority,  respecting 
the  filing  by  any  particular  person  of  an  application  for 
a  patent  or  for  the  reissue  of  a  patent,  the  pendency  of 
any  particular  case  before  the  office,  or  the  subject  matter 
of  any  particular  application,  unless  it  shall  be  necessary 
to  the  proper  conduct  of  business  before  the  office,  as 
pro^ided  by  Rules  97,  103,  and  108,  except  that  author- 
ized officers  of  the  Army  and  Xavif  icill  he  allowed  dur- 
ing the  tear  to  inspect  cases  u-hich  in  the  opinion  of  the 
Commissioner  disclose  inventions  that  might  he  of  value 
in  the  prosecution  of  the  tear,  after  having  filed  a  duly 
executed  oath  icith  the  Commissioner  that  no  contents  of 
any  application  will  he  divulged  except  as  it  may  hecome 
necessary  in  the  prosecution  of  the  icar. 

16.  After  a  patent  has  issued,  the  model,  specification, 
drawings,  and  all  documents  relating  to  the  case  are  sub- 
ject to  general  inspection,  and  copies,  except  of  the 
model,  will  be  furnished  at  the  rates  specified  in  Rule 
191. 

ATTORNEYS. 

17.  An  applicant  or  an  assignee  of  the  entire  interest 
ma\-  prosecute  his  own  case,  but  he  is  advised,  unless 
familiar  with  such  matters,  to  employ  a  competent  patent 
attorney,  as  the  value  of  patents  depends  largely  upon 
the  skillful  preparation  of  the  specification  and  claims. 
The  office  can  not  aid  in  the  selection  of  an  attorney. 

A  register  of  attorneys  will  be  kept  in  this  office,  on 
which  will  be  entered  the  names  of  all  persons  entitled  to 

172 


represent  api)li('ants  before  the  Patent  Office  in  the  pre- 
sentation and  i)rosecution  of  applications  for  patent. 
The  names  of  persons  in  tlie  i'ollowing-  classes  will,  npon 
their  written  re(|nest,  be  entered  npon  this  register : 

(a)  Any  attorney  at  law  who  is  in  good  standing  in 
any  court  of  record  in  the  United  States  or  any  of  the 
States  or  Territories  thereof  and  who  shall  furnish  a  cer- 
tificate of  the  clerk  of  such  United  States,  State,  or  Ter- 
ritorial court,  duly  authenticated  under  the  seal  of  the 
court,  that  he  is  an  attorney  in  good  standing. 

{!))  An}'  person  not  an  attorney'  at  law  who  is  a  citizen 
or  resident  of  the  United  States  and  who  shall  file  proof 
to  the  satisfaction  of  the  Commissioner  that  he  is  of  good 
moral  character  and  of  good  repute  and  possessed  of  the 
necessarj^  legal  and  tec,hnical  qualifications  to  enable  him 
to  render  applicants  for  patents  valuable  service  and  is 
otherwise  competent  to  advise  and  assist  them  in  the  pre- 
sentation and  prosecution  of  their  applications  before  the 
Patent  Office. 

{c)  Any  foreign  patent  attorney  not  a  resident  of  the 
United  States,  who  shall  file  proof  to  the  satisfaction  of 
the  Commissioner  that  he  is  registered  and  in  good  stand- 
ing before  the  patent  office  of  the  country  of  which  he  is 
a  citizen  or  subject,  and  is  possessed  of  the  qualifications 
stated  in  paragraph  (&). 

(rf)  Any  firm  will  be  registered  which  shall  show  that 
the  individual  members  composing  the  firm  are  each  and 
all  registered  under  the  provisions  of  the  preceding  sec- 
tions. 

(> )  The  Commissioner  may  require  proof  of  qualifica- 
tions other  than  those  specified  in  paragraph  (a)  and 
reserves  the  right  to  decline  to  recognize  any  attorney, 
agent,  or  other  person  applying  for  registration  under 
this  rule. 

(/)  Any  person  or  firm  not  registered  and  not  entitled 
to  be  recognized  under  this  rule  as  an  attorney  or  agent 
to  represent  applicants  generally  may,  upon  a  showing 

173 


of  cireumstaiicps  wliicli  render  it  necessary-  or  justifiable, 
be  recognized  by  the  Commissioner  to  prosecute  as  attor- 
ney or  agent  certain  specified  application  or  applica- 
tions, but  this  limited  recognition  shall  not  extend  fur- 
ther than  the  application  or  applications  named. 

(g)  No  person  not  registered  or  entitled  to  recognition 
as  above  provided  will  be  permitted  to  prosecute  appli- 
cations before  the  Patent  Office. 

(h)  Every  attorney  registered  to  practice  before  the 
United  States  Patent  Office  shall  submit  to  the  Commis- 
sioner of  Patents  for  approval  copies  of  all  proposed  ad- 
vertising matter,  circulars,  letters,  cards,  etc.,  intended 
to  solicit  patent  business,  and  if  it  be  not  disapproved 
by  him  and  the  attornej'  so  notified  within  10  days  after 
submission,  it  may  be  considered  approved. 

Any  registered  attorney  sending  out  or  using  any  such 
matter,  a  copy  of  which  has  not  been  submitted  to  the 
Commissioner  of  Patents  in  accordance  with  this  rule, 
or  which  has  been  disapproved  by  the  Commissioner  of 
Patents,  shall  be  subject  to  suspension  or  disbarment,  so 
that  the  rule  as  amended  will  read  as  follows : 

18.  Before  any  attorney,  original  or  associate,  will  be 
allowed  to  inspect  papers  or  take  action  of  any  kind,  his 
power  of  attornej^  must  be  filed.  But  general  powers 
given  b}-  a  principal  to  an  associate  can  not  be  considered. 
In  each  application  t)ie  written  authorization  must  be 
filed.  A  power  of  attorney  purporting  to  have  been  given 
to  a  firm  or  copartnership  will  not  be  recognized,  either 
in  favor  of  the  firm  or  of  any  of  its  members,  unless  all 
its  members  be  named  in  such  power  of  attorney. 

19.  Substitution  or  association  can  be  made  by  an  at- 
torney upon  the  written  autliorization  of  his  principal; 
l)ut  such  authorization  will  not  enipowoi-  the  second  agent 
to  appoint  a  third. 

20.  PowM'rs  of  attorney  may  be  revoked  at  any  stage  in 
the  proceedings  of  a  case  upon  ap])lication  to  and  aj)- 
])i'oval  b\'  the  Commissioner;    and  when  so  revoked  the 

174 


office  will  c*oiiiinuiii(!ate  diret'tly  with  the  applicant,  or 
another  attorney  a])p()inte(I  by  liiiu.  An  attorney  will  be 
promptly  notified  by  the  docket  clerk  of  the  revocation 
of  his  power  of  attorney.  An  assignment  will  not  oper- 
ate as  a  revocation  of  the  power  previously  given,  bnt  the 
assignee  of  the  entire  interest  may  be  represented  by  an 
attorney  of  his  own  selection. 

21.  Parties  or  their  attorneys  will  be  permitted  to  ex- 
amine their  eases  in  the  attorneys'  room,  but  not  in  the 
rooms  of  the  examiners.  Personal  interviews  with  ex- 
aminers will  be  permitted  only  as  hereinbefore  provided. 
(See  Rule  13.) 

22.  (a)  Applicants  and  attorneys  will  be  required  to 
conduct  their  business  with  the  office  with  decorum  and 
courtesy.  Papers  presented  in  violation  of  this  require- 
ment will  be  submitted  to  the  Commissioner,  and  re- 
turned by  his  direct  order. 

(h)  Complaints  against  examiners  and  other  officers 
must  be  made  in  communications  separate  from  other 
papers,  and  will  be  promptly  investigated. 

(c)  For  gross  misconduct  the  Commissioner  may  re- 
fuse to  recognize  any  person  as  a  patent  agent,  either 
generally  or  in  any  particular  case ;  but  the  reasons  for 
the  refusal  will  be  duly  recorded  and  be  subject  to  the 
approval  of  the  Secretary  of  the  Interior. 

(d)  The  Secretary  of  the  Interior  may,  after  notice 
and  opportunity  for  a  hearing,  suspend  or  exclude  from 
further  practice  before  the  Patent  Office  any  person, 
firm,  corporation,  or  association  shown  to  be  incompetent, 
disreputable,  or  refusing  to  comply  with  the  rules  and 
regulations  thereof,  or  with  intent  to  defraud,  in  any 
manner  deceiving,  misleading,  or  threatening  any  claim- 
ant or  prospective  claimant,  by  word,  circular,  letter,  or 
by  advertisement,  or  guaranteeing  the  successful  prose- 
cution of  any  application  for  patent  or  the  procurement 
of  any  patent,  or  by  word,  circular,  letter,  or  advertise- 

175 


ment  making  any  false  promise  or  misleading  representa- 
tion    (Sec.  5,  act  approved  July  4,  1884.) 

23.  Inasmuch  as  applications  can  not  be  examined  out 
of  their  regular  order,  except  in  accordance  with  the 
provisions  of  Rule  63,  and  Members  of  Congress  can 
neither  examine  nor  act  in  patent  cases  without  written 
powers  of  attorney,  applicants  are  advised  not  to  impose 
upon  Senators  or  Eepresentatives  labor  which  will  con- 
sume their  time  without  any  advantageous  results. 

APPLICANTS. 

24.  A  patent  may  be  obtained  by  any  person  who  has 
invented  or  discovered  any  new  and  useful  art,  machine, 
manufacture,  or  composition  of  matter,  or  any  new  and 
useful  improvement  thereof,  not  known  or  used  by  others 
in  this  country  before  his  invention  or  discovery  thereof, 
and  not  patented  or  described  in  am-  printed  publication 
in  this  or  any  foreign  country  before  his  invention  or 
discovery  thereof,  or  more  than  two  years  prior  to  his  ap- 
plication, and  not  patented  in  a  country  foreign  to  the 
United  States  on  an  application  filed  by  him  or  his  legal 
representatiA'es  or  assigns  more  than  twelve  months  be- 
fore his  application,  and  not  in  public  use  or  on  sale  in 
the  United  States  for  more  than  two  years  prior  to  his 
application,  unless  the  same  is  proved  to  have  been  aban- 
doned, upon  payment  of  the  fees  required  by  law  and 
other  due  proceedings  had.     (For  designs,  see  Rule  79.) 

25.  In  case  of  the  death  of  the  inventor,  the  applica- 
tion will  be  made  by  and  the  patent  will  issue  to  his  ex- 
ecutor or  administrator.  In  that  case  the  oath  required 
by  Rule  46  will  ])e  made  by  tlie  executor  or  administrator. 
In  case  of  the  death  of  the  inventor  during  the  time  in- 
tervening between  the  filing  of  his  application  and  the 
granting  of  a  patent  thereon,  the  letters  patent  will  issue 
to  the  executor  or  administrator  upon  proper  interven- 
tion by  him.  The  executor  or  administrator  duly  author- 
ized under  the   law  of  any   foreign  country  to  admin- 

176 


ister  upon  the  estate  of  the  deceased  inventor  shall,  in 
case  the  said  inventor  was  not  domiciled  in  the  United 
States  at  the  time  of  his  death,  have  the  right  to  apply 
for  and  obtain  the  patent.  The  authority  of  such  for- 
eign executor  or  administrator  shall  be  proved  by  cer- 
tificate of  a  diplomatic  or  consular  officer  of  the  United 
States. 

In  case  an  inventor  become  insane,  the  application  may 
be  made  by  and  the  patent  issued  to  his  legally  appointed 
guardian,  conservator,  or  representative,  who  will  make 
the  oath  required  by  Rule  46. 

26.  In  case  of  an  assignment  of  the  whole  interest  in 
the  invention,  or  of  the  whole  interest  in  the  patent  to 
be  granted,  the  patent  will,  upon  request  of  the  applicant 
embodied  in  the  assignment,  issue  to  the  assignee ;  and  if 
the  assignee  hold  an  undivided  part  interest,  the  patent 
will,  upon  like  request,  issue  jointly  to  the  inventor  and 
the  assignee ;  but  the  assignment  in  either  case  must  first 
have  been  entered  of  record,  and  at  a  day  not  later  than 
the  date  of  the  payment  of  the  final  fee  (see  Rule  188)  ; 
and  if  it  be  dated  subsequently  to  the  execution  of  the 
application,  it  must  give  the  date  of  execution  of  the  ap- 
plication, or  the  date  of  filing,  or  the  serial  number,  so 
that  there  can  be  no  mistake  as  to  the  particular  inven- 
tion intended.  The  application  and  oath  must  be  signed 
by  the  actual  inventor,  if  alive,  even  if  tjie  patent  is  to 
issue  to  an  assignee  (see  Rules  30,  40)  ;  if  the  inventor  be 
dead,  the  application  may  be  made  by  the  executor  or  ad- 
ministrator. 

27.  If  it  appear  that  the  inventor,  at  the  time  of  mak- 
ing  his  application,  believed  himself  to  be  the  first  in- 
ventor or  discoverer,  a  patent  will  not  be  refused  on  ac- 
count of  the  invention  or  discovery,  or  anj'  part  thereof, 
having  been  known  or  used  in  any  foreign  countr}^  before 
his  invention  or  discovery  thereof,  if  it  had  not  been  be- 
fore patented  or  described  in  any  printed  publication. 

28.  Joint   inventors   are   entitled  to   a   joint   patent ; 

14  177 


neither  of  them  can  obtain  a  patent  for  an  invention 
jointly  invented  by  them.  Independent  inventors  of 
distinct  and  independent  improvements  in  the  same  ma- 
chine can  not  obtain  a  joint  patent  for  their  separate  in- 
ventions. The  fact  that  one  person  furnishes  the  capital 
and  another  makes  the  invention  does  not  entitle  them 
to  make  an  application  as  joint  inventors ;  but  in  such 
case  they  may  become  joint  patentees,  upon  the  condi- 
tions prescribed  in  Rule  26. 

29.  No  person  otherwise  entitled  thereto  shall  be  de- 
barred from  receiving  a  patent  for  his  invention  or  dis- 
covery by  reason  of  its  having  been  tirst  patented  or 
caused  to  be  patented  by  the  inventor  or  his  legal  repre- 
sentatives or  assigns  in  a  foreign  country,  unless  the  ap- 
plication for  said  foreign  patent  was  filed  more  than 
twelve  months  prior  to  the  filing  of  the  application  in  this 
country,  in,  which  case  no  patent  shall  be  granted  in  this 
country. 

An  application  for  patent  filed  in  this  country  by  any 
person  who  has  previously  regularly  filed  an  application 
for  a  patent  for  the  same  invention  or  discovery  in  a  for- 
eign country-  which,  by  treaty,  convention,  or  law,  affords 
similar  privileges  to  citizens  of  the  United  States  shall 
have  the  same  force  and  effect  as  the  same  application 
would  have  if  filed  in  this  country  on  the  date  on  which 
the  application  for  patent  for  the  same  invention  or  dis- 
covery was  first  filed  in  such  foreign  country,  provided 
the  application  in  this  country  is  filed  within  twelve 
months  from  the  earliest  date  on  which  any  such  foreign 
application  was  filed ;  but  no  patent  shall  be  granted 
upon  such  application  if  the  invention  or  discovery  has 
been  patented  or  described  in  a  printed  publication  in 
this  or  any  foreign  country,  or  has  been  in  public  use  or 
on  sale  in  this  country,  for  more  tliau  two  years  prior  to 
the  (late  of  filing:  in  this  countrv. 


178 


THE  APPLICATION. 

30.  Api)lieatioiis  for  letters  patent  of  the  United  States 
must  be  nuule  to  the  Commissioner  of  Patents,  and  must 
be  sip'ned  by  the  inventor,  or  by  one  of  the  persons  indi- 
cated in  Rule  2.').  (See  Rules  26,  33,  40,  46.)  A  com- 
plete application  comprises  the  first  fee  of  $15,  a  petition, 
specification,  and  oath;  and  drawings,  when  required. 
(See  Rule  49.)  The  petition,  specification,  and  oath 
must  be  in  the  English  language.  All  papers  which  are 
to  become  a  part  of  the  permanent  records  of  the  otfice 
must  be  legibly  written  or  printed  in  permanent  ink. 

31.  An  application  for  a  patent  will  not  be  placed 
upon  the  files  for  examination  until  all  its  parts  as  re- 
quired by  Rule  30  shall  have  been  receiA^ed. 

Every  application  signed  or  sworn  to  in  blank,  or  with- 
out actual  inspection  by  the  applicant  of  the  petition  and 
specification,  and  every  application  altered  or  partly 
filled  up  after  being  signed  or  sworn  to,  will  be  stricken 
from  the  files. 

Completed  applications  are  numbered  in  regular  order, 
the  present  series  having  been  commenced  on  the  1st  of 
January,  1915. 

The  applicant  will  be  informed  of  the  serial  number  of 
his  application. 

The  application  must  be  completed  and  prepared  for 
examination  within  one  year,  as  indicated  above,  and  in 
default  thereof,  or  upon  failure  of  the  applicant  to  prose- 
cute the  same  within  one  year  after  any  action  thereon 
(Rule  77),  of  which  notice  shall  have  been  duly  mailed 
to  him  or  his  agent,  the  application  will  be  regarded  as 
abandoned,  unless  it  shall  be  shown  to  the  satisfaction  of 
the  Commissioner  that  such  delay  was  unavoidable.  (See 
Rules  171  and  172.) 

32.  It  is  desirable  tjiat  all  parts  of  the  complete  ap- 
plication be  deposited  in  the  otfice  at  the  same  time,  and 
that  all  the  papers  embraced  in  the  application  be  at- 
tached together ;   otherwise  a  letter  must  accompany  each 

179 


part,  accurately  and  clearly  connecting  it  with  the  other 
parts  of  the  application.     (See  Rule  10.) 

THE  PETITION. 

33.  The  petition  must  be  addressed  to  the  Commis- 
sioner of  Patents,  and  must  state  the  name,  residence, 
and  post-office  address  of  the  petitioner  requesting  the 
grant  of  a  patent,  designate  by  title  the  invention  sought 
to  be  patented,  contain  a  reference  to  the  specification 
for  a  full  disclosure  of  such  invention,  and  must  be 
signed  by  the  inventor  or  one  of  the  persons  indicated 
in  Rule  25. 

THE  SPECIFICATION. 

34.  The  specification  is  a  written  description  of  the  in- 
vention or  discovery  and  of  the  manner  and  process  of 
making,  constructing,  compounding,  and  using  the  same, 
and  is  required  to  be  in  such  full,  clear,  concise,  and  exact 
terms  as  to  enable  any  person  skilled  in  the  art  or  science 
to  which  the  invention  or  discover}^  appertains,  or  with 
which  it  is  most  nearly  connected,  to  make,  construct, 
compound,  and  use  the  same. 

35.  The  specification  must  set  forth  the  precise  inven- 
tion for  which  a  patent  is  solicited,  and  explain  the  prin- 
ciple thereof,  and  the  best  mode  in  which  the  applicant 
has  contemplated  applying  that  principle,  in  such  man- 
ner as  to  distinguish  it  from  other  inventions. 

36.  In  case  of  a  mere  improvement,  the  specification 
must  particularly  point  out  the  parts  to  which  the  im- 
provement relates,  and  must  by  explicit  language  dis- 
tinguisli  ])etween  what  is  old  and  what  is  claimed  as  new; 
and  the  description  and  the  drawings,  as  well  as  the 
chiims,  should  be  confined  to  the  specific  improvement 
and  such  parts  as  necessarily  cooperate  with  it. 

37.  The  specification  must  conclude  with  a  specific  and 
{jistiiicf  chiiiii  or  claims  of  the  part,  improvement,  or 
comhiuatioii  which  t^he  applicant  regards  as  his  invention 
or  discovery. 

180 


.'j8.  WIicii  llici'c  jirc  (li-a\viii<is  llie  description  shall 
refer  to  the  diOVrciil  xicws  by  figures  and  lo  the  different 
parts  by  letters  or  nnnierals  ( })ret'erably  jlie  latter). 

39.  The  followin<i'  oi-dcr  of  arrangement  should  be 
observed  in  framin<>'  the  specification: 

(a)  Preamble  stating  the  name  and  residence  of  the 
applicant  and  the  title  of  the  invention. 

(h)  General  statement  of  the  object  and  nature  of  the 
invention. 

(c)  Brief  description  of  the  several  views  of  the 
drawings  (if  the  invention  admit  of  such  illustration). 

(d)  Detailed  description. 

(e)  Claim  or  claims. 

(/)   Signature  of  applicant. 

40.  The  specification  must  be  signed  by  the  inventor 
or  one  of  the  persons  indicated  in  Rule  25.  Full  names 
must  be  given,  and  all  names  must  be  legibly  written. 

41.  Two  or  more  independent  inventions  can  not  be 
claimed  in  one  application ;  but  where  several  distinct 
inventions  are  dependent  upon  each  otlier  and  mutually 
contribute  to  produce  a  single  result  they  may  be  claimed 
in  one  application. 

42.  If  several  inventions,  claimed  in  a  single  applica- 
tion, be  of  such  a  nature  that  a  single  patent  ma.y  not  be 
issued  to  cover  them,  the  inventor  will  be  required  to 
limit  the  description,  drawing,  and  claim  of  the  pending 
application  to  whichever  invention  he  may  elect.  The 
other  inventions  may  be  made  the  subjects  of  separate 
applications,  which  must  conform  to  the  rules  applicable 
to  original  applications.  If  the  independence  of  the  in- 
ventions be  clear,  such  limitation  will  be  made  before  any 
action  upon  the  merits ;  otherwise  it  may  be  made  at  any 
time  before  final  action  thereon,  in  the  discretion  of  the 
examiner.  A  requirement  of  division  will  not  be  re- 
peated without  the  written  approval  of  a  law  examiner. 
After  a  final  requirement  of  division,  the  applicant  may 
elect  to  prosecute  one  group  of  claims,  retaining  the  re- 

181 


maining  claims  iu  the  case  with  the  privilege  of  appeal- 
ing from  the  requiremeut  of  division  after  final  action  by 
the  examiner  on  the  group  of  claims  prosecuted. 

43.  When  an  applicant  files  two  or  more  applications 
relating  to  the  same  subject  matter  of  invention,  all  show- 
ing but  only  one  claiming  the  same  thing,  the  applica- 
tions not  claiming  it  must  contain  references  to  the  ap- 
plication claiming  it. 

44.  A  reservation  for  a  future  application  of  subject 
matter  disclosed  but  not  claimed  in  a  pending  applica- 
tion will  not  be  permitted  in  the  pending  application. 

45.  The  specification  and  claims  must  be  plainly  writ- 
ten or  printed  on  but  one  .side  of  the  paper.  All  inter- 
lineations and  erasures  must  be  clearly  referred  to  in 
marginal  or  foot  notes  on  the  same  sheet  of  paper.  Legal- 
cap  paper  with  the  lines  numbered  is  deemed  preferable, 
and  a  wide  margin  must  always  be  reserved  upon  the 
left-hand  side  of  the  page. 

THE  OATH. 

46.  The  applicant,  if  the  inventor,  must  make  oath  or 
affirmation  that  he  does  verily  believe  himself  to  be  the 
original  and  first  inventor  or  discoverer  of  the  art,  ma- 
chine, manufacture,  composition,  or  improvement  for 
which  he  solicits  a  patent ;  that  he  does  not  know  and 
does  not  believe  that  the  same  was  ever  known  or  used 
before  his  invention  or  discovery  thereof,  and  shall  state 
of  what  country  he  is  a  citizen  and  where  he  resides,  and 
whether  he  is  a  sole  or  joint  inventor  of  the  invention 
claimed  in  his  application.  In  every  original  application 
the  applicant  must  distinctly  state  under  oath  that  to  the 
best  of  his  knowledge  and  belief  the  invention  has  not 
been  in  public  use  or  on  .sale  in  the  United  States  for 
more  than  two  years  prior  to  his  application,  or  patented 
or  described  in  any  printed  publication  in  any  country 
before  his  invention  or  more  than  two  years  prior  to  his 
application,  or  patented  in  any  foreign  country  on  an 

182 


ap])li('ati()ii  filed  by  himself  or  his  legal  representatives 
or  assigns  more  than  twelve  months  prior  to  his  appli- 
cation in  this  country.  If  any  application  for  patent  has 
been  filed  in  any  foreign  country  by  the  applicant  in  this 
country,  or  by  his  legal  representatives  or  assigns,  prior 
to  his  application  in  this  country,  he  shall  state  the  coun- 
try or  countries  in  which  such  application  has  been  filed, 
giving  the  date  of  such  application,  and  shall  also  state 
that  no  application  has  been  filed  in  any  other  country 
or  countries  than  those  mentioned,  and  if  no  application 
for  patent  has  been  filed  in  any  foreign  country,  he  shall 
so  state.    This  oath  must  be  subscribed  to  by  the  affiant. 

If  the  application  be  made  by  an  executor  or  adminis- 
trator of  a  deceased  person  or  the  guardian,  conservator, 
or  representative  of  an  insane  person,  the  oath  shall 
allege  the  relationship  of  the  affiant  to  the  inventor  and, 
upon  information  and  belief,  the  facts  which  the  inventor 
is  required  by  this  rule  to  make  oath  to. 

The  Conniiissioner  may  require  an  additional  oath  in 
cases  where  the  applications  have  not  been  filed  in  the 
Patent  Office  within  a  reasonable  time  after  the  execution 
of  the  original  oath. 

47.  The  oath  or  affirmation  may  be  made  before  any 
person  within  the  Uuited  States  authorized  by  law  to 
administer  oaths,  or,  when  the  applicant  resides  in  a  for- 
eign country,  before  any  minister,  charge  d 'af5l'aires,  con- 
sul, or  connuercial  agent  holding  commission  under  the 
Government  of  the  United  States,  or  before  any  notary 
public,  judge,  or  magistrate  having  an  official  seal  and 
authorized  to  administer  oaths  in  the  foreign  country  in 
which  the  applicant  may  be,  whose  authority  shall  be 
proved  by  a  certificate  of  a  diplomatic  or  consular  officer 
of  the  T'^nited  States,  the  oath  being  attested  in  all  cases 
in  this  and  other  countries,  by  the  proper  official  seal  of 
the  officer  before  whom  the  oath  or  affirmation  is  made, 
except  that  no  oath  or  affirmation  may  be  administered 
by  any  attorney  appearing  in  the  case.    "When  the  person 

183 


before  whom  the  oath  or  affirmation  is  made  in  this  coun- 
try is  not  provided  with  a  seal,  his  official  character  shall 
be  established  by  competent  evidence,  as  by  a  certificate 
from  a  clerk  of  a  court  of  record  or  other  proper  officer 
having-  a  seal. 

When  the  oath  is  taken  before  an  officer  in  a  country 
foreign  to  the  United  States,  all  the  application  papers 
must  be  attached  together  and  a  ribbon  passed  one  or 
more  times  through  all  the  sheets  of  the  application,  and 
the  ends  of  said  ribbon  brought  together  under  the  seal 
before  the  latter  is  affixed  and  impressed,  or  each  sheet 
must  be  impressed  with  the  official  seal  of  the  officer  be- 
fore whom  the  oath  was  taken. 

48.  When  an  applicant  presents  a  claim  for  matter 
originally  shown  or  described  but  not  substantially  em- 
braced in  the  statement  of  invention  or  claim  originally 
presented,  he  shall  file  a  supplemental  oath  to  the  effect' 
that  the  subject  matter  of  the  proposed  amendment  was 
part  of  his  invention,  was  invented  before  he  filed  his 
original  application,  was  not  known  or  used  before  his 
invention,  was  not  patented  or  described  in  a  printed 
publication  in  any  country  more  than  two  years  before 
his  application,  was  not  patented  in  any  foreign  country 
on  an  application  filed  by  himself  or  his  legal  representa- 
tives or  assigns  more  than  twelve  months  prior  to  his 
application,  was  not  in  public  use  or  on  sale  in  this  coun- 
try for  more  than  two  years  before  the  date  of  his  appli- 
cation, and  lias  not  been  abandoned.  Such  supplemental 
oath  must  be  attached  to  and  pro])erly  identify  the  pro- 
posed amendment. 

Ill  proper  cases  the  oath  here  required  may  be  made 
by  ;iii  executor  or  administrator  of  a  deceased  person  or 
a  guardian,  conservator,  or  representative  of  an  insane 
person.     (See  Rule  46.) 


184 


THE  DRAWINGS. 

4!).  The  applicjiiif  for  <i  pjitoiit  is  r('({uired  by  law  to 
furnish  a  drawiiij^  of  his  iiiNciition  whenever  the  nature 
of  the  case  admits  of  it. 

50.  The  drawing  may  he  sioiied  by  tlie  inventor  or  one 
of  the  persons  indicated  in  Rule  25,  or  the  name  of  the 
applicant  may  be  signed  on  the  drawing  by  his  attorney 
in  fact.  The  drawing  must  show  every  feature  of  the 
invention  covered  by  the  claims,  and  the  figures  should 
be  consecutively  numbered,  if  possible.  When  the  inven- 
tion consists  of  an  improvement  of  an  old  machine  the 
drawing  must  exhibit,  in  one  or  more  views,  the  inven- 
tion itself,  disconnected  from  the  old  structure,  and  also 
in  another  view,  so  much  only  of  the  old  structure  as  will 
sutfico  to  show  the  connection  of  the  invention  therewith. 

51.  Two  editions  of  patent  drawings  are  printed  and 
published — one  for  office  use,  certified  copies,  etc.,  of 
the  size  and  character  of  those  attached  to  patents,  the 
work  being  about  6  by  9I/2  inches;  and  one  reduction  of 
a  selected  portion  of  each  drawing  for  the  Official  Ga- 
zette. 

52.  This  work  is  done  by  the  photolithographic  proc- 
ess, and  therefore  the  character  of  each  original  drawing 
must  be  brought  as  nearly  as  possible  to  a  uniform  stand- 
ard of  excellence,  suited  to  the  requirements  of  the  proc- 
ess, to  give  the  best  results,  in  the  interests  of  inventors, 
of  the  office,  and  of  the  public.  The  following  rules  will 
therefore  be  rigidly  enforced,  and  any  departure  from 
them  will  be  certain  to  cause  delay  in  the  examination  of 
an  application  for  letters  patent : 

(a)  Drawings  must  be  made  upon  pure  white  paper 
of  a  thickness  corresponding  to  two-sheet  or  three-sheet 
Bristol  board.  The  surface  of  the  paper  must  be  calen- 
dered and  smooth.  India  ink  alone  must  be  used,  to 
secure  perfectly  black  and  solid  lines. 

(b)  The  size  of  a  sheet  on  which  a  drawing  is  made 
must  be  exactly  10  by  15  inches.    One  inch  from  its  edges 

185 


a  single  marginal  line  is  to  be  drawn,  leaving  the  "sight" 
precisely  8  by  13  inches.  "Within  this  margin  all  work 
and  signatures  must  be  included.  One  of  the  shorter 
sides  of  the  sheet  is  regarded  as  its  top,  and  measuring 
downwardly  from  the  marginal  line,  a  space  of  not  less 
than  11/4  inches  is  to  be  left  blank  for  tbe  heading  of 
title,  name,  number,  and  date. 

(c)  All  drawings  must  be  made  with  the  pen  only. 
Every  line  and  letter  (signatures  included;  must  be  ab- 
solutely black.  This  direction  applies  to  all  lines,  how- 
ever fine,  to  shading,  and  to  lines  representing  cut  sur- 
faces in  sectional  views.  All  lines  must  be  clean,  sharp, 
and  solid,  and  they  must  not  be  too  fine  or  crowded.  Sur- 
face shading,  when  used,  should  be  open.  Sectional 
shading  should  be  made  by  oblique  parallel  lines,  which 
may  be  about  one-twentieth  of  an  inch  apart.  Solid 
black  should  not  be  used  for  sectional  or  surface  shading. 
Free-hand  work  should  be  avoided  wherever  it  is  possible 
to  do  so. 

(d)  Drawings  should  be  made  with  the  fewest  lines 
possible  consistent  with  clearness.  By  the  observance  of 
this  rule  the  effectiveness  of  the  work  after  reduction  will 
be  much  increased.  Shading  (except  on  sectional  views) 
should  be  used  only  on  convex  and  concave  surfaces, 
where  it  should  be  used  sparingly,  and  may  even  there 
be  dispensed  with  if  the  drawing  be  otherwise  well  exe- 
cuted. The  plane  upon  which  a  sectional  ^-iew  is  taken 
should  be  indicated  on  the  general  view  by  a  broken  or 
dotted  line,  which  should  be  designated  by  numerals  cor- 
responding to  the  number  of  the  sectional  view.  Heavy 
lines  on  the  shade  sides  of  objects  should  be  used,  except 
where  they  tend  to  thicken  the  work  and  obscure  letters 
of  reference.  The  light  is  always  supposed  to  come  from 
the  upper  left-hand  corner  at  an  angle  of  4o  degrees. 

(e)  The  scale  to  whicli  a  drawing  is  made  ought  to  be 
large  enough  to  sliow  the  mechanism  without  crowding, 
and  two  or  more  sheets  should  be  used  if  one  does  not 

186 


give  sufficient  rooni  to  accomplish  tiiis  end  ;  but  the  num- 
ber of  sheets  nuist  lu'ver  be  more  tlian  is  absolutely  neces- 
sary. 

(/)  The  different  views  shoidd  be  consecutively  num- 
bered. Letters  and  figures  of  reference  must  be  carefully 
formed.  They  should,  if  possible,  measure  at  least  one- 
eighth  of  an  inch  in  height,  so  that  they  may  bear  reduc- 
tion to  one  twenty-fourth  of  an  inch;  and  they  may  be 
much  larger  when  there  is  sufficient  room.  They  must  be 
so  placed  in  the  close  and  complex  parts  of  drawings  as 
not  to  interfere  with  a  thorough  comprehension  of  the 
same,  and  therefore,  should  rarely  cross  or  mingle  with 
the  lines.  When  necessarily  grouped  around  a  certain 
part  they  should  be  placed  at  a  little  distance,  where 
there  is  available  space,  and  connected  by  lines  with  the 
parts  to  which  they  refer.  They  should  not  be  placed 
upon  shaded  surfaces,  but  when  it  is  difficult  to  avoid 
this,  a  blank  space  must  be  left  in  the  shading  where  the 
letter  occurs,  so  that  it  shall  appear  perfectly  distinct 
and  separate  from  the  work.  If  the  same  part  of  an  in- 
vention appear  in  more  than  one  view  of  the  drawing  it 
must  always  be  represented  by  the  same  character,  and 
the  same  character  must  never  be  used  to  designate  dif- 
ferent parts. 

(g)  The  signature  of  the  applicant  should  be  placed  at 
the  lower  right-hand  corner  of  each  sheet,  and  the  signa- 
tures of  the  witnesses,  if  any,  at  the  lower  left-hand 
corner,  all  within  the  marginal  line,  but  in  no  instance 
should  they  trespass  upon  the  drawings.  (See  specimen 
drawing,  appendix.)  The  title  should  be  written  with 
pencil  on  the  back  of  the  sheet.  The  permanent  names 
and  title  constituting  the  heading  will  be  applied  subse- 
quently by  the  office  in  uniform  style. 

(h)  All  view^s  on  the  same  sheet  must  stand  in  the 
same  direction  and  must  if  possible  stand  so  that  they 
can  be  read  with  the  sheet  held  in  an  upright  position. 
If  views  longer  than  the  width  of  the  sheet  are  necessary 

187 


for  the  proper  illustration  of  the  invention  the  sheet 
may  be  turned  on  its  side.  The  space  for  lieading  must 
then  he  reserved  at  the  right  and  the  signatures  placed  at 
the  left,  occupying  the  same  space  and  position  as  in  the 
upright  views  and  being  horizontal  when  the  sheet  is 
held  in  an  upright  position.  One  figure  must  not  be 
placed  upon  another  or  within  the  outline  of  another. 

(?')  As  a  rule,  one  view  only  of  each  invention  can  be 
show^n  in  the  Gazette  illustrations.  The  selection  of  that 
portion  of  a  drawing  best  calculated  to  explain  the  na- 
ture of  the  specific  improvement  would  be  facilitated 
and  the  final  result  improved  by  the  judicious  execution 
of  a  figure  with  express  reference  to  the  Gazette,  but 
which  must  at  the  same  time  serve  as  one  of  the  figures 
referred  to  in  the  specification.  For  this  purpose  the 
figure  ma}'  be  a  plan,  elevation,  section,  or  perspective 
view,  according  to  the  judgment  of  the  draftsman.  All 
its  parts  should  be  especially  open  and  distinct,  with  very 
little  or  no  shading,  and  it  must  illustrate  the  invention 
claimed  only,  to  the  exclusion  of  all  other  details.  (See 
specimen  drawing.)  When  well  executed,  it  will  be  used 
without  curtailment  or  change,  but  any  excessive  fine- 
ness, or  crowding,  or  unnecessary  elaborateness  of  detail 
will  necessitate  its  exclusion  from  the  Gazette. 

(j)  Drawings  transmitted  to  the  office  should  be  sent 
fiat,  protected  by  a  sheet  of  heavy  binder's  board;  or 
should  be  rolled  for  transmission  in  a  suitable  mailing 
tube,  but  should  never  be  folded. 

(k)  An  agent's  or  attorney's  stamp,  or  advertisement, 
or  written  address  will  not  be  permitted  upon  the  face 
of  a  drawing,  within  or  without  the  marginal  line. 

r)3.  All  reissue  applications  must  be  accompanied  by 
new  drawings,  of  the  character  required  in  original  ap- 
plications, and  the  inventor's  name  nnist  appear  upon 
the  same  in  all  cases;  and  such  drawings  shall  be  made 
upon  the  same  scale  as  the  original  drawing,  or  upon  a 

]88 


larger  scale,  unless  a  reduction  of  scale  shall  be  author- 
ized by  the  ( 'Ommissioner. 

54.  The  foregoing  ruU^s  relating  to  drawings  will  be 
rigidly  enforced.  A  drawing  not  executed  in  conformity 
thereto  may  be  admitted  for  purposes  of  examination  if 
it  sufficiently  illustrate  the  invention,  but  in  such  case 
the  drawing  nuist  be  corrected  or  a  new  one  furnished 
before  the  ai)plication  will  be  allowed.  The  necessary 
corrections  will  be  made  by  the  office,  upon  applicant's 
request  and  at  his  expense.     (See  Rule  72.) 

55.  Applicants  are  advised  to  employ  competent 
draftsmen  to  make  their  drawings. 

The  otifice  will  furnish  the  drawings  at  cost,  as  prompt- 
ly as  its  draftsmen  can  mal^e  them,  for  applicants  who 
can  not  otherwise  conveniently  procure  them. 

THE  MODEL. 

56.  A  model  will  be  required  or  admitted  as  a  part  of 
the  application  onl,y  when  on  examination  of  the  case  in 
its  regular  order  the  primary  examiner  shall  find  it  to 
be  necessary  or  useful.  In  such  case,  if  a  model  has  not 
been  furnished,  the  examiner  shall  notify  the  applicant 
of  such  requirement,  which  will  constitute  an  official  ac- 
tion in  the  case.  AVhen  a  model  has  been  received  in  com- 
pliance with  the  official  requirement,  the  date  of  its  filing 
shall  be  entered  on  the  file  wrapper.  Models  not  re- 
(juired  nor  admitted  will  be  returned  to  the  applicants. 
When  a  model  is  retpiired,  the  examination  may  be  sus- 
pended until  it  shall  have  been  filed. 

57.  The  model  must  clearlj-  exhibit  ever\^  feature  of 
the  machine  which  forms  the  subject  of  a  claim  of  inven- 
tion, but  should  not  include  other  matter  than  that  cov- 
ered by  the  actual  invention  or  improvement,  unless  it 
be  necessary  to  the  exhibition  of  the  invention  in  a  work- 
ing model. 

58.  The  model  must  be  neatly  and  substantially  made 
of  durable  material,  metal  being  deemed  preferable ;   but 

189 


when  the  material  forms  an  essential  feature  of  the  in- 
vention, the  model  should  be  constructed  of  that  mate- 
rial. 

59.  A  working  model  ma.y  be  required  if  necessary  to 
enable  the  office  fully  and  readily  to  understand  the 
precise  operation  of  the  machine. 

60.  In  all  applications  which  have  become  abandoned, 
the  model,  unless  it  be  deemed  necessary  that  it  be  pre- 
served in  the  office,  may  be  returned  to  the  applicant 
upon  demand  and  at  his  expense ;  and  the  model  in  any 
pending  case  of  less  than  one  year's  standing  may  be 
returned  to  the  applicant  upon  the  filing  of  a  formal 
abandonment  of  the  application,  signed  by  the  applicant 
in  person  and  any  assignee.     (See  Rule  171.) 

Models  belonging  to  patented  cases  shall  not  be  taken 
from  the  office  except  in  the  custody  of  some  sworn  em- 
ployee of  the  office  specially  aut;horized  bj"  the  Commis- 
sioner. 

61.  Models  filed  as  exhibits  in  contested  cases  may  be 
returned  to  the  parties  at  their  expense.  If  not  claimed 
within  a  reasonable  time,  they  may  be  disposed  of  at  the 
discretion  of  the  Commissioner, 

SPECIMENS. 

62.  When  the  invention  or  discovery  is  a  composition 
of  matter,  the  applicant,  if  required  by  the  Commis- 
sioner, shall  furnish  specimens  of  the  composition,  and 
of  its  ingrodients,  sufficient  in  quantity  for  the  purpose 
of  experiment.  In  all  cases  where  the  article  is  not  per- 
ishable, a  specimen  of  the  composition  claimed,  put  up  in 
projior  form  to  be  preserved  by  the  office,  must  be  fur- 
)iished.     (Rules  56,  60,  and  61  n])i)ly  to  specimens  also.) 

THE  EXAMINATION. 

(>:{.  Applications  tih'd  in  tlie  Patent  Office  are  classi- 
fied accoi'ding  lo  llie  various  arts,  and  are  taken  up  for 
cxaiiiiiialion  in  regular  order  of  filing,  those  in  the  same 

1f)0 


class  of  invention  bein^f  examined  and  disposed  of,  so  far 
as  practicable,  in  the  order  in  which  the  respective  appli- 
cations have  been  completed. 

Applications  which  liave  been  put  into  condition  for 
furthei'  action  hy  the  examiner  sliall  be  entitled  to  pre- 
cedence over  ]iew  applications  in  the  same  class  of  inven- 
tion. 

The  following-  cases  have  preference  over  all  other 
cases  at  every  period  of  their  examination  in  the  order 
enumerated : 

(a)  Applications  wherein  the  inventions  are  deemed 
of  peculiar  importance  to  some  branch  of  the  public  serv- 
ice, and  when  for  that  reason  the  head  of  some  depart- 
ment of  the  Government  requests  immediate  action  and 
the  Commissioner  so  orders ;  but  in  this  case  it  shall  be 
the  duty  of  the  head  of  that  department  to  be  represented 
before  the  Commissioner  in  order  to  prevent  the  im- 
proper issue  of  a  patent. 

(6)  Applications  for  reissues. 

(c)  Cases  remanded  by  an  appellate  tribunal  for  fur- 
ther action,  and  statements  of  gTounds  of  decisions  pro- 
vided for  in  Rules  135  and  142. 

(d)  Applications  which  appear  to  interfere  with  other 
applications  previously  considered  and  found  to  be  al- 
lowable, or  which  it  is  demanded  shall  be  placed  in  inter- 
ference with  an  unexpired  patent  or  patents. 

(e)  Applications  wdiich  have  been  renewed  or  revived, 
but  the  subject  matter  not  changed. 

(/)  Applications  filed  more  than  twelve  months  after 
the  filing  of  an  application  for  the  same  invention  in  a 
foreign  country. 

Applications  will  not  be  advanced  for  examination  ex- 
cepting upon  order  of  the  Commissioner  either  to  expe- 
dite the  business  of  the  office  or  upon  a  verified  showing 
that  delay  will  probably  cause  the  applicant  serious  and 
irreparable  injury. 

64.  Where  the  specification  and  claims  are  such  that 

191 


the  invention  may  be  readily  understood,  the  examina- 
tion of  a  complete  application  and  the  action  thereon 
will  be  directed  throughout  to  the  merits;  but  in  each 
letter  the  examiner  shall  state  or  refer  to  all  his  objec- 
tions. 

Only  in  applications  found  by  the  examiner  to  present 
patentable  subject  matter  and  in  applications  on  which 
appeal  is  taken  to  the  examiners  in  chief  will  require- 
ments in  matters  of  form  be  insisted  on.  (See  Rules  95 
and  134.) 

REJECTIONS  AND  REFERENCES. 

65.  "Whenever,  on  examination,  any  claim  of  an  appli- 
cation is  rejected  for  any  reason  whatever,  the  applicant 
will  be  notified  thereof.  The  reasons  for  the  rejection 
will  be  fully  and  precisely  stated,  and  such  information 
and  references  will  be  given  as  may  be  useful  in  aiding 
the  applicant  to  judge  of  the  propriety  of  prosecuting 
his  application  or  of  altering  his  specification,  and  if, 
after  receiving  this  notice,  he  shall  persist  in  his  claim, 
with  or  without  altering  his  specification,  the  application 
will  be  reexamined.  If  upon  reexamination  the  claim 
shall  be  again  rejected,  the  reasons  therefor  will  be  fully 
and  precisely  stated. 

66.  Upon  taking  up  an  application  for  action  on  the 
merits  the  examiner  shall  make  a  thorough  investigation 
of  the  prior  art  with  respect  to  the  invention  sought  to 
be  protected  in  the  application.  Upon  the  rejection  of 
an  application  for  want  of  novelty,  the  examiner  must 
cite  the  best  references  at  his  command.  When  the  ref- 
erence shows  or  describes  inventions  other  than  that 
claimed  by  the  applicant,  the  particular  part  relied  on 
must  be  designated  as  nearly  as  practicable.  The  perti- 
nence of  the  reference,  if  not  obvious,  must  be  clearly 
explained  and  the  anticipated  claiiii  specified. 

If  domestic  patents  be  cited,  their  dates  and  numbers, 
the  luanes  of  the  patentees,  and  the  classes  of  invention 

192 


must  be  stated.  If  foreiji'ii  patents  be  cited,  tlieir  dates 
and  numbers,  the  names  of  the  i)atentees,  and  the  cUisses 
of  inventions  nuist  be  stated,  and  such  other  data  must 
be  furnished  as  nuiy  be  necessary  to  enable  the  ai)i)licant 
to  identify  the  patents  cited.  Tn  citing-  foreign  patents 
the  number  of  sheets  of  drawing  involving  tlu>  i)arts  re- 
lied upon  for  auticipalion  nnist  be  specified,  and  in  case 
part  onh'  of  the  patent  be  involved,  the  ])articular  sheets 
of  the  drawing-  containing  the  parts  relied  upon  nnist  be 
identified  by  number,  or  by  stating  the  numbers  of  the 
fig'ures  involved.  Tf  ))rinted  ])ublications  be  cited,  the 
title,  date,  pag-e  or  plate,  author,  and  place  of  publica- 
tion, or  place  where  a  copy  can  be  found,  shall  be  given. 
When  reference  is  made  to  facts  within  the  personal 
knowledge  of  an  employee  of  the  office,  the  data  shall  be 
as  specific  as  possible,  and  the  reference  must  be  sup- 
ported, when  called  for,  by  the  affidavit  of  such  employee 
(Rule  76)  ;  such  affidavit  shall  be  subject  to  contradic- 
tion, explanation,  or  corroboration  by  the  affidavits  of 
the  applicant  and  other  persons.  If  the  patent,  printed 
matter,  plates,  or  drawings  so  referred  to  are  in  the  pos- 
session of  the  office,  copies  will  be  furnished  at  the  rate 
specified  in  Rule  191,  upon  the  order  of  the  applicant. 

67.  Whenever,  in  the  treatment  of  an  ex  parte  applica- 
tion, an  adverse  decision  is  made  upon  any  preliminary 
or  intermediate  question,  without  the  rejection  of  an.y 
claim,  notice  thereof,  together  wdth  the  reasons  therefor, 
will  be  given  to  the  applicant,  in  order  that  he  may  judge 
of  the  propriety  of  the  action.  If,  after  receiving  this 
notice,  he  traverse  the  propriety  of  the  action,  the  mat- 
ter will  be  reconsidered. 

AMENDMENTS  AND  ACTIONS  BY  APPLICANTS. 

68.  The  applicant  has  a  right  to  amend  before  or  after 
the  first  rejection  or  action ;  and  he  may  amend  as  often 
as  the  examiner  presents  new  references  or  reasons  for 
rejection.     In  so  amending  the  applicant  must  clearly 

15  193 


point  out  all  the  patentable  novelty  which  he  thinks  the 
ease  presents  in  view  of  the  state  of  the  art  disclosed  by 
the  references  citeid  or  the  objections  made.  He  must 
also  show  how  the  amendments  avoid  such  references  or 
objections. 

After  such  action  upon  an  application  as  will  entitle 
the  applicant  to  an  appeal  to  the  examiners  in  chief 
(Rule  134),  or  after  appeal  has  been  taken,  amendments 
canceling  claims  or  presenting  those  rejected  in  better 
form  for  consideration  on  appeal  may  be  admitted;  but 
the  admission  of  such  an  amendment  or  its  refusal,  and 
any  proceedings  relative  thereto,  shall  not  operate  to  re- 
lieve the  application  from  its  condition  as  subject  to  ap- 
peal, or  to  save  it  from  abandonment  under  Rule  171. 
If  amendments  touching  the  merits  of  the  application  be 
presented  after  the  case  is  in  condition  for  appeal,  or 
after  appeal  has  been  taken,  they  may  be  admitted  upon 
a  showing,  dul.y  verified,  of  good  and  sufficient  reasons 
why  they  were  not  earlier  presented.  From  the  refusal 
of  the  primary  examiner  to  admit  an  amendment  a  peti- 
tion will  lie  to  the  Commissioner  under  Rule  142.  No 
amendment  can  be  made  in  appealed  cases  between  the 
filing  of  the  examiner's  statement  of  the  grounds  of  his 
decision  (Rule  135)  "and  the  decision  of  the  appellate 
tribunal.  After  decision  on  appeal  amendments  can  only 
be  made  as  provided  in  Rule  140,  or  to  carry  into  effect 
a  recommendation  under  Rule  139. 

69.  In  order  to  be  entitled  to  the  reexamination  or  re- 
consideration provided  for  in  Rules  65  and  67  the  appli- 
cant must  make  request  therefor  in  writing,  and  he  must 
distinctly  and  specifically  point  out  the  supposed  errors 
in  the  examiner's  action;  the  applicant  must  respond  to 
every  ground  of  objection  and  rejection  of  the  prior  of- 
fice action  except  as  provided  in  Rule  64,  and  the  appli- 
cant's  action  must  appear  throughout  to  be  a  bona  fide 
attempt  to  advance  the  case  to  final  action.  The  mere  al- 
legation Ili;it  the  exciminer  has  erred  will  not  be  received 

194 


as  a  proper  reason  for  such  reexamination  or  reconsider- 
ation. 

70.  In  original  applications  all  amendments  of  the 
drawings  or  specifications,  and  all  additions  thereto,  must 
conform  to  at  least  one  of  them  as  it  was  at  the  time  of 
the  filing  of  the  application.  Matter  not  found  in  either, 
involving  a  departure  from  the  original  invention,  can 
not  be  added  to  the  application  even  though  supported 
by  a  supplemental  oath,  and  can  be  shown  or  claimed 
only  in  a  separate  application. 

71.  The  specification  and  drawing  must  be  amended 
and  revised  when  required,  to  correct  inaccuracies  of  de- 
scription or  unnecessary  prolixitj^,  and  to  secure  corre- 
spondence between  the  claim,  the  specification,  and  the 
drawing.  But  no  change  in  the  drawing  may  be  made 
except  by  written  permission  of  the  office  and  after  a 
photographic  copy  of  the  drawing  as  originally  presented 
has  been  filed. 

72.  After  the  completion  of  the  application  the  office 
will  not  return  the  specification  for  any  purpose  what- 
ever. If  applicants  have  not  preserved  copies  of  the 
papers  which  they  wish  to  amend,  the  office  will  furnish 
them  on  the  usual  terms. 

The  drawing  may  be  withdrawn  only  for  such  correc- 
tions as  can  not  be  made  by  the  office ;  but  a  drawing  can 
not  be  withdrawn  unless  a  photographic  copy  has  been 
filed  and  accepted  by  the  examiner  as  a  part  of  the  ap- 
plication. Permissible  changes  in  the  construction  shown 
in  any  drawing  ma}"  be  made  only  by  the  office  and  after 
an  approved  photographic  copy  has  been  filed.  Substi- 
tute drawings  will  not  be  admitted  in  any  case  unless  re- 
quired by  the  office. 

73.  In  every  amendment  the  exact  word  or  words  to  be 
stricken  out  or  inserted  in  the  application  must  be  speci- 
fied and  the  precise  point  indicated  where  the  erasure  or 
insertion  is  to  be  made.  All  such  amendments  must  be 
on  sheets  of  paper  separate  from  the  papers  previously 

195 


filed,  and  written  on  but  one  side  of  the  paper.  Erasures, 
additions,  insertions,  or  mutilations  of  the  papers  and 
records  must  not  be  made  by  the  applicant. 

Amendments  and  papers  requiring  the  signature  of  the 
applicant  must  also,  in  case  of  assignment  of  an  undi- 
vided part  of  the  inyention,  be  signed  by  the  assignee. 
(Rules  6,  107.) 

74.  When  an  amendatory  clause  is  amended  it  must  be 
wholly  rewritten,  so  that  no  interlineation  or  erasure 
shall  appear  in  the  clause  as  finally  amended,  when  the 
application  is  passed  to  issue.  If  the  number  or  nature 
of  the  amendments  shall  render  it  otherwise  difficult  to 
consider  the  case,  or  to  arrange  the  papers  for  printing 
or  copying,  the  examiner  may  require  the  entire  specifi- 
cation to  be  rewritten. 

75.  "When  an  original  or  reissue  application  is  rejected 
on  reference  to  an  expired  or  unexpired  domestic  patent 
which  substantially  shows  or  describes  but  does  not  claim 
the  rejected  iuTention,  or  on  reference  to  a  foreign  patent 
or  to  a  printed  publication,  and  the  applicant  shall  make 
oath  to  facts  sho-^ing  a  completion  of  the  invention  in 
this  country  before  the  filing  of  the  application  on  which 
the  domestic  patent  issued,  or  before  the  date  of  the  for- 
eign patent,  or  before  the  date  of  the  printed  publication, 
and  .shall  also  make  oath  that  he  does  not  know  and  does 
not  believe  that  the  invention  has  been  in  public  use  or 
on  sale  in  this  country,  or  patented  or  described  in  a 
printed  publication  in  this  or  any  foreign  country  for 
more  than  two  years  prior  to  his  application,  and  that  he 
has  never  abandoned  the  invention,  then  the  patent  or 
publication  cited  shall  not  bar  the  grant  of  a  patent  to 
the  applicant,  unless  the  date  of  such  patent  or  printed 
publication  be  more  than  two  years  prior  to  the  date  on 
which  application  was  filed  in  this  country. 

76.  When  an  application  is  rejected  on  reference  to  an 
expired  or  unexpired  domestic  patent  which  .shows  or  de- 
scribes but  does  not  claim  the  invention,  or  on  reference 

196 


to  a  foreign  jiatont,  or  to  a  printed  publication,  or  to 
facts  within  the  personal  knowledge  of  an  employee  of 
the  office,  set  forth  in  an  affidavit  (when  requested)  of 
such  emploj'ee  (Rule  66),  or  when  rejected  on  the  ground 
of  public  use  or  sale,  or  upon  a  mode  or  capability  of  op- 
eration attributed  to  a  reference  or  because  the  alleged 
invention  is  held  to  be  inoperative  or  frivolous  or  injur- 
ious to  public  health  or  morals,  affidavits  or  depositions 
supporting  or  traversing  these  references  or  objections 
may  be  received,  but  affidavits  will  not  be  received  in 
other  cases  without  special  permission  of  the  Commis- 
sioner.    (See  Rule  138.) 

77.  If  an  applicant  neglect  to  prosecute  his  application 
for  one  year  after  the  date  when  the  last  official  notice  of 
any  action  by  the  office  was  mailed  to  him,  the  applica- 
tion will  be  held  to  be  abandoned,  as  set  forth  in  Rule 
171. 

Suspensions  will  only  be  granted  for  good  and  suffi- 
cient cause,  and  for  a  reasonable  time  specified.  Only 
one  suspension  may  be  granted  by  the  primary  examiner ; 
any  further  suspension  must  be  approved  by  the  Com- 
missioner. 

Whenever  action  upon. an  application  is  suspended 
upon  request  of  an  applicant,  and  whenever  an  applicant 
has  been  called  upon  to  put  his  application  in  condition 
for  interference,  the  period  of  one  year  running  against 
the  application  shall  be  considered  as  beginning  at  the 
date  of  the  last  official  action  preceding  such  actions. 

Whenever,  during  a  time  when  the  United  States  is  at 
ivar,  publication  of  an  invention  hy  the  granting  of  a 
patent  might,  in  the  opinion  of  the  Commissioner,  he 
detrimental  to  the  public  safety  or  defense  or  might  assist 
the  enemy  or  endanger  the  successful  prosecution  of  the 
war,  he  may  suspend  action  on  the  application  therefor. 

78.  Amendments  after  the  notice  of  allowance  of  an 
application  will  not  be  permitted  as  a  matter  of  right, 
but  may  be  made,  if  the  specification  has  not  been  print- 

197 


ed,  on  the  recommendation  of  the  primary  examiner,  ap- 
proved by  the  Commissioner,  without  withdrawing  the 
ease  from  issue.    (See  Rule  165.) 

DESIGNS. 

79.  A  design  patent  maj'  be  obtained  by  any  person 
who  has  invented  any  new,  original,  and  ornamental  de- 
sign for  an  article  of  manufacture,  not  known  or  used  by 
others  in  this  country  before  his  invention  thereof,  and 
not  patented  or  described  in  any  printed  publication  in 
this  or  any  foreign  country  before  his  invention  thereof, 
or  more  than  two  years  prior  to  his  application,  and  not 
caused  to  be  patented  by  him  in  a  foreign  country  on  an 
application  filed  more  than  four  months  before  his  appli- 
cation in  this  country,  and  not  in  public  use  or  sale  in 
this  country  for  more  than  two  years  prior  to  his  applica- 
tion, unless  the  same  is  proved  to  have  been  abandoned, 
upon  pajanent  of  the  fees  required  by  law  and  other  due 
proceedings  had,  the  same  as  in  cases  of  inventions  or 
discoveries. 

80.  Patents  for  designs  are  granted  for  the  term  of 
three  and  one-half  years,  or  for  seven  years,  or  for  four- 
teen years,  as  the  applicant  may,  in  liis  application,  elect. 

Where  the  applicant  requests  that  the  patent  issue  for 
one  of  the  shorter  terms,  he  may,  at  any  time  before  the 
allowance  of  the  application,  upon  the  payment  of  the 
additional  fee,  amend  his  application  by  requesting  that 
the  patent  be  issued  for  a  longer  term. 

81.  The  proceedings  in  applications  for  patents  for  de- 
signs are  substantially  the  same  as  in  applications  for 
oilier  palciils.  Since  a  design  patent  gives  to  the  pat- 
entee the  exclusive  right  to  make,  use,  and  vend  articles 
havi)ig  tiie  appearance  of  that  disclosed,  and  since  the 
appejii'jiiice  e;in  be  disclosed  only  by  a  ])ieture  of  the 
article,  llie  claim  shonld  be  in  llie  broadest  form  for  the 
article  as  shown. 

198 


82.  The  following  order  oi'  arrangement  should  be  ob- 
served in  framing  design  speeifieations : 

(a)  Preamble,  stating  name  and  residence  of  the  ap- 
plicant, title  of  the  design,  and  the  name  of  the  article 
for  which  the  design  has  been  invented. 

(h)  Description  of  the  figure  or  figures  of  the  draw- 
ing. 

(c)  Claim. 

(d)  Signature  of  applicant. 

83.  When  the  design  can  be  sufficiently  represented  by 
drawings  a  model  will  not  be  required. 

84.  The  design  must  be  represented  by  a  drawing  made 
to  conform  to  the  rules  laid  down  for  drawings  of  me- 
chanical inventions. 

(For  forms  to  be  used  in  applications  for  design  pat- 
ents, see  appendix.) 

REISSUES. 

85.  A  reissue  is  granted  when  the  original  patent  is  in- 
operative or  invalid  by  reason  of  a  defective  or  insuffi- 
cient specification,  or  by  reason  of  the  patentee  claiming 
as  his  invention  or  discovery  more  than  he  had  a  right  to 
claim  as  new,  provided  the  error  has  arisen  through  in- 
advertence, accident,  or  mistake,  and  without  any  fraud- 
ulent or  deceptive  intention. 

Reissue  applications  must  be  made  and  the  specifica- 
tions sworn  to  by  the  inventors  if  they  be  living. 

86.  The  petition  for  a  reissue  must  be  accompanied  by 
an  order  for  a  certified  copy  of  the  abstract  of  title,  to  be 
placed  in  the  file,  giving  the  names  of  all  assignees  own- 
ing any  undivided  interest  in  the  patent.  In  case  the  ap- 
plication be  made  by  the  inventor  it  must  be  accom- 
panied by  the  written  assent  of  such  assignees. 

A  reissue  will  be  granted  to  the  original  patentee,  his 
legal  representatives  or  assigns,  as  the  interest  may  ap- 
pear. 

87.  Applicants  for  reissue,  in  addition  to  the  require- 

199 


ments  of  the  first  sentence  of  Rule  46,  must  also  file  with 
their  petitions  a  statement  on  oath  as  follows : 

((/)  That  applicant  verily  believes  the  original  patent 
to  be  inoperative  or  invalid,  and  the  reason  why. 

( h )  When  it  is  claimed  that  such  patent  is  so  inopera- 
tive or  invalid  "by  reason  of  a  defective  or  insufiicient 
specification,"  particularly  specifying  such  defects  or  in- 
sufficiencies. 

(c)  When  it  is  claimed  that  such  patent  is  inoperative 
or  invalid  ' '  by  reason  of  the  patentee  claiming  as  his  own 
invention  or  discovery  more  than  he  had  a  right  to  claim 
as  new,"  distinctly  specifying  the  part  or  parts  so  al- 
leged to  have  been  improperly  claimed  as  new. 

(d)  Particularly  specifying  the  errors  which  it  is 
claimed  constitute  the  inadvertence,  accident,  or  mistake 
relied  upon,  and  how  they  arose  or  occurred. 

(e)  That  said  errors  arose  "without  any  fraudulent 
or  deceptive  intention ' '  on  the  part  of  the  applicant. 

88.  New  matter  shall  not  be  allowed  to  be  introduced 
into  the  reissue  specification,  nor  in  the  case  of  a  machine 
shall  the  model  or  drawings  be  amended  except  each  by 
the  other. 

89.  The  Commissioner  may,  in  his  discretion,  cause 
several  patents  to  be  issued  for  distinct  and  separate 
parts  of  the  thing  patented,  upon  demand  of  the  appli- 
cant, and  upon  payment  of  the  required  fee  for  each 
division  of  such  reissued  letters  patent.  Each  division 
of  a  reissue  constitutes  the  subject  of  a  separate  specifica- 
tion descriptive  of  the  part  or  parts  of  the  invention 
claimed  in  such  division;  and  the  drawing  may  repre- 
sent only  such  part  or  ])arts,  subject  to  the  provisions  of 
Rule  50.  Tin  less  otherwise  ordered  by  the  Commissioner, 
all  the  divisions  of  a  reissue  will  issue  simultaneously ;  if 
thero  be  any  controversy  as  to  one  division,  the  others 
will  !)('  withheld  from  issue  until  the  controversy  is 
ended,  iiiih'ss  tlie  Commissioner  shall  otherwise  order. 

!)().  All   original  claim,  if  reproduced  in  the  reissue 
200 


specification,  is  subject  to  reexamination,  and  the  entire 
application  will  be  revised  and  restricted  in  the  same 
manner  as  original  applications,  excepting  that  division 
will  not  be  required. 

91.  The  application  for  a  reissue  must  be  accompanied 
by  the  original  patent  and  an  offer  to  surrender  the 
same,  or,  if  the  original  be  lost,  by  an  affidavit  to  that  ef- 
fect, and  a  certified  copy  of  the  patent.  If  a  reissue  be 
refused,  the  original  patent  will  be  returned  to  applicant 
upon  his  request. 

92.  Matter  shown  and  described  in  an  unexpired  pat- 
ent which  is  an  indivisible  part  of  the  invention  claimed 
therein,  but  which  was  not  claimed  by  reason  of  a  de- 
fect or  insufficiency  in  the  specification,  arising  from  in- 
advertence, accident,  or  mistake,  and  without  fraud  or 
deceptive  intent,  can  not  be  subsequently  claimed  by  the 
patentee  in  a  separate  patent,  but  only  in  a  reissue  of  the 
original  patent. 

INTERFERENCES. 

93.  An  interference  is  a  proceeding  instituted  for  the 
purpose  of  determining  the  question  of  priority  of  in- 
vention between  two  or  more  parties  claiming  substan- 
tially the  same  patentable  invention.  In  order  to  ascer- 
tain tvhcther  any  question  of  priority  arises  the  Commis- 
sioner may  call  upon  any  junior  applicant  to  state  in 
ivriting  the  date  when  he  conceived  the  invention  under 
consideration.  All  statements  filed  in  compliance  with 
this  rule  will  he  returned  to  the  parties  filing  them.  In 
case  the  applicant  malxes  no  reply  within  the  time  speci- 
fied, not  less  than  ten  days,  the  Commissioner  will  pro- 
ceed upon  the  assumption  that  the  said  date  is  the  date 
of  the  oath  attached  to  the  application.  The  fact  that 
one  of  the  parties  has  already  obtained  a  patent  will  not 
prevent  an  interference,  for,  although  the  Commissioner 
has  no  power  to  cancel  a  patent,  he  may  grant  another 

201 


patent  for  the  same  invention  to  a  person  who  proves  to 
be  the  prior  inventor. 

94.  Interferences  will  be  declared  between  applications 
by  different  parties  for  patent  or  for  reissue  when  such 
applications  contain  claims  for  substantially'  the  same 
invention  which  are  allowable  in  the  application  of  each 
party,  and  interferences  will  also  be  declared  between 
applications  for  patent,  or  for  reissue,  and  unexpired 
original  or  reissued  patents,  of  different  parties,  when 
such  applications  and  patents  contain  claims  for  substan- 
tially the  same  invention  which  are  allowable  in  all  of  the 
applications  involved :  Provided,  That  where  the  filing 
date  of  any  applicant  is  subsequent  to  the  filing  date  of 
any  patentee,  the  applicant  shall  file  an  affidavit  that  he 
made  the  invention  before  the  filing  date  of  the  patentee. 

Parties  owning  applications  or  patents  which  contain 
conflicting  claims  will  be  required  before  an  interference 
is  declared  to  show  cause  why  these  claims  shall  not  be 
eliminated  from  all  but  one  of  the  applications  or  patents 
of  common  ownership. 

95.  Before  the  declaration  of  interference  all  prelim- 
inary questions  must  be  settled  by  the  primary  exam- 
iner, and  the  issue  must  be  clearly  defined ;  the  inven- 
tion which  is  to  form  the  subject  of  the  controversy  must 
have  been  patented  to  one  of  the  parties  or  have  been  de- 
cided to  be  patentable,  and  the  claims  of  the  respective 
parties  must  be  put  in  such  condition  that  they  will  not 
re(iuire  alteration  after  the  interference  shall  have  been 
finally  decided,  unless  the  evidence  adduced  upon  the 
trial  shall  necessitate  or  justify  such  change. 

In  case  the  subject  matter  in  controversy  has  been  pat- 
ented to  one  of  the  parties  but  is  deemed  by  the  examiner 
not  to  be  patentable,  he  shall  call  the  ease  to  the  attention 
of  the  Commissioner,  who  may  direct  the  declaration  of 
the  interference. 

9(j.  Whenever  the  claims  of  two  or  more  applications 
differ   in   phraseology,   but   relate   to   substantially   the 

202 


same  patentable  subject  matter,  the  examiner,  when  one 
of  the  applications  is  ready  for  allowance,  shall  suggest 
to  the  parties  such  claims  as  are  necessary  to  cover  the 
common  invention  in  substantially  the  same  language. 
The  examiner  shall  send  copies  of  the  letter  suggesting 
claims  to  the  applicant  and  to  the  assignees,  as  well  as 
to  the  attorney  of  record  in  each  case.  The  parties  to 
whom  the  claims  are  suggested  will  be  required  to  make 
those  claims  and  put  the  applications  in  condition  for 
allowance  within  a  specified  time  in  order  that  an  inter- 
ence  may  be  declared.  Upon  the  failure  of  any  appli- 
cant to  make  the  claim  suggested  within  the  time  speci- 
fied, such  failure  or  refusal  shall  be  taken  without  fur- 
ther action  as  a  disclaimer  of  the  invention  covered  by 
the  claim,  and  the  issue  of  the  patent  to  the  applicant 
whose  application  is  in  condition  for  allowance  will  not 
be  delayed  unless  the  time  for  making  the  claim  and  put- 
ting the  application  in  condition  for  allowance  be  ex- 
tended upon  a  proper  showing.  If  a  part}^  make  the 
claim  without  putting  his  application  in  condition  for 
allowance,  the  declaration  of  the  interference  will  not  be 
delayed,  but  after  judgment  of  priority  the  application 
of  that  party  will  be  held  for  revision  and  restriction, 
subject  to  interference  with  other  applications. 

Whenever  it  shall  be  found  that  two  or  more  parties 
whose  interests  are  in  conflict  are  represented  by  the 
same  attorney,  the  examiner  shall  notify  each  of  said 
principal  parties  and  also  the  attorney  of  this  fact. 

97.  When  an  interference  is  found  to  exist  and  the 
applications  are  prepared  therefor,  the  primary  exam- 
iner shall  forward  to  the  examiner  of  interferences  the 
files  and  drawings ;  notices  of  interference  for  all  the 
parties  (as  specified  in  Rule  103)  disclosing  the  name 
and  residence  of  each  party  and  those  of  his  attorney, 
and  of  any  assignee,  and,  if  anj^  part}"  be  a  patentee,  the 
date  and  number  of  the  patent ;  the  ordinals  of  the  con- 
flicting claims  and  the  title  of  the  invention  claimed ;  and 

203 


the  issue,  which  shall  be  clearly  and  concisely  defined  in 
so  many  counts  or  branches  as  may  be  necessary  in  order 
to  include  all  interfering  claims.  Where  the  issue  is 
stated  in  more  than  one  count  the  respective  claims  in- 
volved in  each  count  shall  be  specified.  The  primary 
examiner  shall  also  forward  to  the  examiner  of  interfer- 
ences for  his  use  a  statement  disclosing  the  applications 
involved  in  interference,  fully  identified,  arranged  in 
the  inverse  chronological  order  of  the  filing  of  the  com- 
pleted applications,  and  also  disclosing  the  issue  or  issues 
and  the  ordinals  of  the  conflicting  claims,  the  name  and 
residence  of  any  assignee,  and  the  names  and  residences 
of  all  attorneys,  both  principal  and  associate. 

98.  ITpon  receipt  of  the  notices  of  interference,  the  ex- 
aminer of  interferences  shall  make  an  examination 
thereof,  in  order  to  ascertain  whether  the  issues  between 
the  parties  have  been  clearly  defined,  and  whether  they 
are  otherwise  correct.  If  he  be  of  the  opinion  that  the 
notices  are  ambiguous  or  are  defective  in  any  material 
point,  he  shall  transmit  his  objections  to  the  primary  ex- 
aminer, who  shall  promptly  notify  the  examiner  of  in- 
terferences of  his  decision  to  amend  or  not  to  amend 
them. 

99.  In  ease  of  a  material  disagreement  between  the  ex- 
aminer of  interferences  and  the  primary  examiner,  the 
points  of  dift'erence  shall  be  referred  to  the  Commissioner 
for  decision. 

100.  The  primary  examiner  will  retain  jurisdiction  of 
the  case  until  the  declaration  of  interference  is  made. 

101.  Upon  the  institution  and  declaration  of  the  inter- 
ference, as  provided  in  Rule  102,  the  examiner  of  inter- 
ferences will  take  jurisdiction  of  the  same,  which  will 
then  become  a  contested  case ;  but  the  law  examiner  will 
determine  the  motions  mciitioiKMl  in  Rule  122,  as  therein 
provided. 

102.  Wlicn  the  notices  of  interference  are  in  proper 
form,  tlie  examiner  of  interferences  sluill  add  thereto  a 

204 


designation  of  the  time  within  which  the  preliminaiy 
statements  reciuired  by  Rule  110  must  be  filed,  and  shall, 
pro  forma,  institute  and  declare  the  interference  by  for- 
warding the  notices  to  the  several  parties  to  tlie  proceed- 
ing. 

103.  The  notices  of  interference  shall  be  forwarded  by 
the  examiner  of  interferences  to  all  the  parties,  in  care 
of  their  attorneys,  if  they  have  attorneys,  and,  if  the  ap- 
plication or  patent  in  interference  has  been  assigned,  to 
the  assignee.  When  one  of  the  parties  has  received  a 
patent,  a  notice  shall  be  sent  to  the  patentee  and  to  his 
attorney  of  record. 

When  the  notices  sent  in  the  interest  of  a  patent  are 
returned  to  the  office  undelivered,  or  when  one  of  the  par- 
ties resides  abroad  and  his  agent  in  the  United  States  is 
unknown,  additional  notice  may  be  given  by  publication 
in  the  Official  Gazette  for  such  period  of  time  as  the 
Commissioner  may  direct. 

104.  If  eitlier  party  require  a  postponement  of  the 
time  for  filing  his  preliminary  statement,  he  shall  pre- 
sent his  motion,  duly  served  on  the  other  parties,  with 
his  reasons  therefor,  supported  by  affidavit,  and  such  mo- 
tion should  be  made,  if  possible,  prior  to  the  day  previ- 
ously set.  But  the  examiner  of  interferences  may,  in  his 
discretion,  extend  the  time  on  e.r  parte  request  or  upon 
his  own  motion. 

103.  When  an  application  is  involved  in  an  interfer- 
ence in  which  a  part  only  of  the  invention  is  included  in 
the  issue,  the  applicant  may  file  certified  copies  of  the 
part  or  parts  of  the  specification,  claims,  and  drawings 
which  cover  the  interfering  matter,  and  such  copies  may 
be  used  in  the  proceeding  in  place  of  the  original  appli- 
cation. 

106.  When  a  part  only  of  an  application  is  involved  in 
an  interference,  the  applicant  may  withdraw  from  .his 
application  the  subject  matter  adjudged  not  to  interfere, 
and  file  a  new  application  therefor,  or  he  may  file  a  divi- 

205 


sioiial  application  for  the  subject  matter  involved,  if  the 
invention  can  be  legitimately  divided:  Provided,  That 
no  claim  shall  be  made  in  the  application  not  involved 
in  the  interference  broad  enough  to  include  matter 
claimed  in  the  application  involved  therein. 

107.  An  applicant  involved  in  an  interference  may, 
with  the  written  consent  of  the  assignee,  when  there  has 
been  an  assignment,  before  the  date  fixed  for  the  filing  of 
his  preliminary  statement  (see  Rule  110),  in  order  to 
avoid  the  continuance  of  the  interference,  disclaim  under 
his  own  signature  the  invention  of  the  particular  matter 
in  issue,  and  upon  such  disclaimer  judgment  shall  be 
rendered  against  him. 

108.  When  applications  are  declared  to  be  in  interfer- 
ence, the  interfering  parties  will  be  permitted  to  see  or 
obtain  copies  of  each  other's  file  wrappers,  and  so  much 
of  their  contents  as  relates  to  the  interference,  after  the 
preliminary  statements  referred  to  in  Rule  110  have  been 
received  and  approved;  but  information  of  an  applica- 
tion will  not  be  furnished  by  the  office  to  an  opposing 
party,  except  as  provided  in  Rules  97  and  103,  until  after 
the  approval  of  such  statements. 

109.  An  applicant  involved  in  an  interference  may,  at 
any  time  within  thirty  days  after  the  preliminary  .state- 
ments (referred  to  in  Rule  110)  of  the  parties  have  been 
received  and  approved,  on  motion  duly  made,  as  pro- 
vided by  Rule  153,  file  an  amendment  to  his  application 
containing  any  claims  Avhich  in  his  opinion  should  be 
made  the  basis  of  interference  between  himself  and  any 
of  the  other  parties.  Such  motion  must  be  accompanied 
by  tlie  proposed  amendment,  and  wlion  in  proper  form 
will  be  set  for  hearing  before  the  law  examiner.  AYliere 
a  party  opposes  the  admission  of  such  an  amendment  in 
view  of  i)i-i()r  ])atents  or  publications,  full  notice  of  such 
patents  or  publications  nnist  be  given  at  least  five  days 
prior  to  the  date  of  hearing.  On  the  admission  of  such 
amendment,  and  the  adoption  of  the  claims  by  the  other 

20G 


parties  within  a  time  specified  by  the  hiw  examiner,  the 
])riniar3'  examiner  shall  redeclare  the  interference,  or 
shall  declare  such  other  interferences  as  may  be  neces- 
sary to  include  the  said  claims.  New  preliminary  state- 
ments will  be  received  as  to  the  added  claims,  but  motions 
for  dissolution  with  regard  thereto  will  not  be  consid- 
ered where  the  questions  raised  could  have  been  disposed 
of  in  connection  with  the  admission  of  the*  claims. 
Amendments  to  the  s))ecification  will  not  be  received 
during  the  pendency  of  the  interference,  without  the 
consent  of  the  Commissioner,  except  as  provided  herein, 
and  in  Rule  106. 

Any  party  to  an  interference  may  bring  a  motion  to 
put  in  interference  any  claims  already  in  his  application 
or  patent,  which  in  his  opinion  should  be  made  the  basis 
of  interference  between  himself  and  any  of  the  other 
parties.  Such  motions  are  subject  to  the  same  condi- 
tioiLS,  and  the  procedure  in  connection  therewith  is  the 
same,  so  far  as  applicable,  as  hereinabove  set  forth  for 
motions  to  amend. 

110.  Each  party  to  the  interference  will  be  required  to 
file  a  concise  preliminary  statement,  under  oath,  on  or 
before  a  date  to  be  fixed  by  the  otfice,  showing  the  fol- 
lowing facts : 

{a)  The  date  of  original  conception  of  the  invention 
set  forth  in  the  declaration  of  interference. 

(&)  The  date  upon  which  the  first  drawing  of  the  in- 
vention and  the  date  upon  w^hich  the  first  written  de- 
scription of  the  invention  were  made. 

(c)  The  date  upon  which  the  invention  was  first  dis- 
closed to  others. 

(d)  The  date  of  tiie  reduction  to  practice  of  the  inven- 
tion. 

(e)  A  statement  showing  the  extent  of  use  of  the  in- 
vention. 

(/)  The  applicant  shall  state  the  date  and  number  of 
any  application  for  the  same  invention  filed  within  twelve 

207 


months  before  the  filing  date  in  the  United  States,  in 
any  foreign  country  adhering  to  the  International  Con- 
vention for  the  Protection  of  Industrial  Property  or 
having  similar  treaty  relations  with  the  United  States. 

If  a  drawing  has  not  been  made,  or  if  a  written  de- 
scription of  the  invention  has  not  been  made,  or  if  the 
invention  has  not  been  reduced  to  practice  or  disclosed 
to  others  or  used  to  any  extent,  the  statement  must  spe- 
cificallj'  disclose  these  facts. 

When  the  invention  was  made  abroad  the  statement 
should  set  forth : 

(a)  That  the  applicant  made  the  invention  set  forth 
in  the  declaration  of  interference. 

(?))  Whether  or  not  the  invention  Avas  ever  patented; 
if  so,  when  and  where,  giving  the  date  and  number  of 
each  patent,  the  date  of  publication,  and  the  date  of  seal- 
ing thereof. 

(c)  Whether  or  not  the  invention  was  ever  described 
in  a  printed  publication ;  if  so,  when  and  where,  giving 
the  title,  place,  and  date  of  such  publication. 

(d)  When  the  invention  was  introduced  into  this 
country,  giving  the  circumstances  wdth  the  dates  con- 
nected therewith  which  are  relied  upon  to  establish  the 
fact. 

The  preliminary  statements  should  be  carefully  pre- 
pared, as  the  parties  will  be  strictly  held  in  their  proofs 
to  the  dates  set  up  therein. 

If  a  part}'  prove  any  date  earlier  than  alleged  in  his 
preliminary  statement,  such  proof  will  be  held  to  estab- 
lish the  date  alleged  and  none  other. 

The  statement  must  be  sealed  up  before  filing  (to  be 
opened  only  by  the  examiner  of  interferences ;  see  Rule 
111),  and  the  name  of  the  party  filing  it,  the  title  of  the 
case,  and  the  subject  of  the  invention  indicated  on  the 
envelop.  The  envelop  should  contain  nothing  but  this 
statement. 

(Few  forms,  see  86  and  37,  appendix.) 

208 


111.  The  preliminary  statements  .shall  not  be  opened 
to  the  inspection  of  the  opposing  parties  until  each  one 
shall  have  been  filed,  or  the  time  for  such  filing,  with  any 
extension  thereof,  shall  have  expired,  and  not  then  un- 
less they  have  been  examined  by  the  proper  officer  and 
found  to  be  satisfactory. 

Any  party  in  default  in  filing  his  preliminary  state- 
ment shall  not  have  access  to  the  preliminary  state- 
ment or  statements  of  his  opponent  or  opponents  until  he 
has  either  filed  his  statement  or  waived  his  right  thereto, 
and  agreed  to  stand  upon  his  record  date. 

A  party  who  alleges  no  date  in  his  preliminar}'  state- 
ment earlier  than  the  filing  date  of  the  application  or 
applications  of  the  other  party  or  parties  shall  not  have 
access  to  the  preliminary  statement  of  said  party  or 
parties. 

112.  If,  on  examination,  a  statement  is  found  to  be  de- 
fective in  any  particular,  the  party  shall  be  notified  of 
the  defect  and  wherein  it  consists,  and  a  time  assigned 
within  which  he  must  cure  the  same  by  an  amended 
statement;  but  in  no  case  will  the  original  or  amended 
statement  be  returned  to  the  party  after  it  has  been  filed. 
Unopened  statements  will  be  removed  from  interference 
files  and  preserved  by  the  office,  and  in  no  case  will  such 
statements  be  open  to  the  inspection  of  the  opposing 
party  without  authority  from  the  Commissioner.  If  a 
party  shall  refuse  to  file  an  amended  statement  he  may 
be  restricted  to  his  record  date  in  the  further  proceed- 
ings in  the  interference. 

113.  In  case  of  material  error  arising  through  inad- 
vertence or  mistake,  the  statement  may  be  corrected  on 
motion  (see  Rule  153),  upon  a  satisfactory  showing  that 
the  correction  is  essential  to  the  ends  of  justice.  The 
motion  to  correct  the  statement  must  be  made,  if  pos- 
sible, before  the  taking  of  any  testimony,  and  as  soon  as 
practicable  after  the  discovery  of  the  error. 

114.  If  the  junior  party  to  an  interference,  or  if  any 

i6  209 


party  thereto  other  than  the  senior  party,  fail  to  file  a 
statement,  or  if  his  statement  fail  to  overcome  the  prima 
facie  case  made  by  the  respective  dates  of  application, 
such  party  shall  be  notified  by  the  examiner  of  inter- 
ferences that  judgment  upon  the  record  will  be  rendered 
against  him  at  the  expiration  of  thirty  days,  unless  cause 
be  shown  why  such  action  should  not  be  taken.  Within 
this  period  an}'  of  the  motions  permitted  by  the  rules  may 
be  brought.  Motions  brought  after  judgment  on  the 
record  has  been  rendered  will  not  be  entertained  unless 
sufficient  reasons  appear  for  the  delay. 

115.  If  a  party  to  an  interference  fail  to  file  a  state- 
ment, testimony  will  not  be  received  subsequently  from 
him  to  prove  that  he  made  the  invention  at  a  date  prior 
to  his  application. 

116.  The  parties  to  an  interference  will  be  presumed 
to  have  made  the  invention  in  the  chronological  order  in 
which  the,y  filed  their  completed  applications  for  patents 
clearly  disclosing  the  invention ;  and  the  burden  of 
proof  will  rest  upon  the  party  who  shall  seek  to  establish 
a  different  state  of  facts. 

117.  The  preliminary  statement  can  in  no  case  be  used 
as  evidence  in  behalf  of  the  party  making  it. 

118.  Times  will  be  assigned  in  which  the  junior  appli- 
cant shall  complete  his  testimony  in  chief,  and  in  which 
the  other  party  shall  complete  the  testimony  on  his  side, 
and  a  further  time  in  which  the  junior  applicant  may 
take  rebutting  testimony ;  but  he  shall  take  no  other 
testimony.  If  there  be  more  than  two  parties  to  the  in- 
terference, the  times  for  taking  testimony  will  be  so  ar- 
ranged that  each  shall  have  an  opportunity  to  prove  his 
case  against  prior  applicants  and  to  rebut  their  evidence, 
and  also  to  meet  the  evidence  of  junior  applicants. 

]]f).  Upon  the  filing  of  an  affidavit  by  any  senior  party 
to  an  interference  that  the  time  for  taking  testimony  on 
bchjilf  of  any  junior  party  has  expired  and  that  no  testi- 
mony has  been  taken  by  him,  an  order  shall  be  entered 

210 


that  the  junior  party  sliow  cause  within  a  time  set  there- 
in, not  less  than  ten  days,  why  judgment  should  not  be 
rendered  against  him,  and  in  the  absence  of  a  showing 
of  good  and  sufficient  cause  judgment  shall  be  so  ren- 
dered. If  any  showing  be  made  in  response  to  the  order, 
it  must  be  served  upon  the  opposing  party  and  noticed 
for  hearing  by  the  party  filing  it. 

120.  If  either  party  desire  to  have  the  hearing  con- 
tinued, he  shall  make  application  for  such  postponement 
by  motion  (see  Rule  153),  and  shall  show  sufficient  rea- 
son therefor  by  affidavit. 

121.  If  either  party  desire  an  extension  of  the  time  as- 
signed to  him  for  taking  testimony,  he  shall  make  appli- 
cation therefor,  as  provided  in  Rule  154  (d). 

122.  Motions  to  dissolve  an  interference  (1)  alleging 
that  there  has  been  such  informality  in  declaring  the 
same  as  will  preclude  the  proper  determination  of  the 
question  of  priority  of  invention,  or  (2)  denying  the 
patentability  of  an  applicant's  claim,  or  (3)  denying  his 
right  to  make  the  claim,  should  contain  a  full  statement 
of  the  grounds  relied  upon  and  should,  if  possible,  be 
made  not  later  than  the  thirtieth  day  after  the  state- 
ments of  the  parties  have  been  received  and  approved. 
Such  motions  and  all  motions  of  a  similar  character,  if 
in  the  opinion  of  the  Commissioner  they  be  in  proper 
form,  will  be  heard  and  determined  by  the  law  examiner, 
due  notice  of  the  day  of  hearing  being  given  by  the  of- 
fice to  all  parties.  If  in  the  opinion  of  the  Commissioner 
the  motion  be  not  in  proper  form,  or  if  it  be  not  brought 
within  the  time  specified  and  no  satisfactory  reason  be 
given  for  the  delay,  it  will  not  be  considered  and  the 
parties  will  be  so  notified. 

When  the  motion  has  been  decided  by  the  law  examiner 
the  files  and  papers,  with  his  decision,  will  be  sent  at 
once  to  the  docket  clerk. 

Motions  to  shift  the  burden  of  proof  should  be  made 
before,  and  will  be  determined  by,  the  examiner  of  in- 

211 


lerferences.  No  appeal  from  the  decision  on  such  mo- 
tions will  be  entertained,  but  the  matter  may  be  reviewed 
on  appeal  from  the  final  decision  upon  the  question  of 
priority  of  invention. 

123.  Settings  a  motion  brought  under  the  provisions  of 
Rule  109  or  of  Rule  122  for  hearing  by  the  law  examiner 
will  act  as  a  stay  of  proceedings  pending  the  determina- 
tion of  the  motion.  To  effect  a  stay  of  proceedings  in 
other  cases,  motion  should  be  made  before  the  tribunal 
having-  jurisdiction  of  the  interference,  who  will,  suffi- 
cient grounds  appearing  therefor,  order  a  suspension  of 
the  interference  pending  the  determination  of  such  mo- 
tion. 

124.  Where,  on  motion  for  dissolution,  the  law  ex- 
aminer renders  an  adverse  decision  upon  the  merits  of  a 
party's  case,  as  when  he  holds  that  the  issue  is  not  pat- 
entable or  that  a  party  has  no  right  to  make  a  claim,  he 
shall  fix  a  limit  of  appeal  not  less  than  twenty  days  from 
the  date  of  his  decision.  Appeal  lies  to  the  examiners  in 
chief  in  the  first  instance  and  will  be  heard  inter  partes. 
If  the  appeal  be  not  taken  within  the  time  fixed,  it  will 
not  be  entertained  except  by  permission  of  the  Commis- 
sioner. 

No  appeal  will  be  permitted  from  a  decision  rendered 
upon  motion  for  dissolution  affirming  the  patentability 
of  a  claim  or  the  applicant's  right  to  make  the  same. 

Ap])eals  may  be  taken  directly  to  the  Commissioner, 
except  in  the  cases  provided  for  in  the  preceding  por- 
tions of  tliis  rule,  from  decisions  on  such  motions  as,  in 
his  judgment,  should  be  appealable. 

125.  After  an  interference  is  finally  declared  it  Avill 
not,  except  as  hereiii  otherwise  provided,  be  determined 
willioiit  judgment  of  priority  founded  either  upon  the 
evidence,  ov  upon  a  wi-i1teu  concession  of  priority,  or 
upon  a  wriltcu  dischiimci-  of  llie  invention,  or  upon  a 
writtru    (Icclaraliou    of   al)aii(l()nnu'nt   of  the   invention, 

212 


signed  by  tlio  inventor  himself  (and  by  the  assignee,  if 
any). 

126.  The  examiner  of  interferences  or  the  examiners  in 
chief  may,  either  before  or  in  their  decision  on  the  ques- 
tion of  priority,  direct  the  attention  of  the  Commissioner 
to  any  matter  not  relating  to  priority  which  may  have 
come  to  their  notice,  and  which,  in  their  opinion,  estab- 
lishes the  fact  that  no  interference  exists,  or  that  there 
has  been  irregularity  in  declaring  the  same  (Rule  122), 
or  which  amounts  to  a  statutory  bar  to  the  grant  of  a 
patent  to  either  of  the  parties  for  the  claim  or  claims  in 
interference.  The  Commissioner  may  suspend  the  inter- 
ference and  remand  the  case  to  the  primary  examiner  for 
his  consideration  of  the  matters  to  M^hich  attention  has 
been  directed.  From  the  decision  of  the  examiner  appeal 
may  be  taken  as  in  other  cases.  If  the  case  shall  not  be 
so  remanded,  the  primary  examiner  will,  after  judgment, 
consider  any  matter  affecting  the  rights  of  either  party 
to  a  patent  which  may  have  been  called  to  his  attention, 
unless  the  same  shall  have  been  previously  disposed  of  by 
the  Commissioner. 

127.  A  second  interference  will  not  be  declared  upon  a 
new  application  for  the  same  invention  filed  by  either 
party. 

128.  If,  during  the  pendency  of  an  interference,  a  ref- 
erence be  found,  the  primary  examiner  shall  call  the  at- 
tention of  the  law  examiner  thereto,  and  the  latter  may 
request  the  suspension  of  the  interference  until  the  final 
determination  of  the  pertinency  and  effect  of  the  refer- 
ence, and  the  interference  shall  then  be  dissolved  or 
continued  as  the  result  of  such  determination.  The  con- 
sideration of  such  reference  shall  be  inter  partes  and  be- 
fore the  law  examiner. 

129.  If,  during  the  pendency  of  an  interference,  an- 
other case  appear,  claiming  substantially  the  subject 
matter  in  issue,  the  primary  examiner  shall  request  the 
suspension  of  the  interference  for  the  purpose  of  adding 

213 


said  case.  Such  suspension  will  be  granted  as  a  matter 
of  course  by  the  examiner  of  interferences  if  no  testi- 
mony has  been  taken.  If,  however,  any  testimony  has 
been  taken,  a  notice  for  the  proposed  new  party,  disclos- 
ing the  issue  in  interference  and  the  names  and  addresses 
of  the  interferants  and  of  their  attorneys,  and  notices  for 
the  interferants  disclosing  the  name  and  address  of  the 
said  party  and  his  attorney,  shall  be  prepared  by  the 
primary  examiner  and  forwarded  to  the  examiner  of  in- 
terferences, who  shall  mail  said  notices  and  set  a  time 
of  hearing  on  the  question  of  the  admission  of  the  new 
party.  If  the  examiner  of  interferences  be  of  the  opin- 
ion that  the  interference  should  be  suspended  and  the 
new  party  added,  he  shall  prescribe  the  terms  for  such 
suspension.  The  decision  of  the  examiner  of  interfer- 
ences as  to  the  addition  of  a  party  shall  be  final. 

130.  Where  the  patentability  of  a  claim  to  an  op- 
ponent is  material  to  the  right  of  a  party  to  a  patent, 
said  party  may  urge  the  noni)atentability  of  the  claim  to 
his  opponent  as  a  basis  for  the  decision  upon  priority  of 
invention.  A  party  shall  not  be  entitled  to  raise  this 
question,  however,  unless  he  has  duly  presented  and 
prosecuted  a  motion  under  Rule  122  for  dissolution  upon 
this  ground  or  shows  good  reason  why  such  a  motion  was 
not  presented  and  prosecuted.  When  the  law  examiner 
has  denied  such  a  motion  for  dissolution  the  question 
shall  not  be  reinvestigated  by  the  examiner  of  interfer- 
ences except  in  view  of  evidence  which  was  not  before  the 
law  examiner,  but  it  may  be  raised  before  the  appellate 
tribunals  on  appear  from  award  of  priority  by  the  ex- 
aminer of  interferences. 

1:51.  When,  on  motion  duly  made  and  upon  satisfac- 
1(ir\-  ])r()()r,  it  sliall  Ix-  shown  that,  by  reason  of  the  in- 
al)ility  oi"  refusal  of  the  inventor  to  prosecute  or  defend 
an  intei-ference,  or  from  other  cause,  the  ends  of  justice 
r('(|uire  lliat  an  assignee  ol"  an  undivided  interest  in  the 

214 


iiivontion  l)e  pcniiittcd  to  prosecute  or  dct'oid  llic  sJiiiic, 
it,  may  be  so  ordered. 

132.  Whenever  an  awai'd  ol"  priority  lias  been  ren- 
dci-ed  in  an  interference  proceeding  by  any  tribunal  and 
the  limit  of  appeal  from  such  d(>cision  lias  expired,  and 
wlienever  an  interference  luis  been  terminated  by  reason 
of  the  written  concession,  signed  by  the  applicant  in 
person,  of  priority  of  invention  in  favor  of  his  opponent 
or  opponents,  the  primary  examiner  shall  advise  the  de- 
feated or  unsuccessful  party  or  parties  to  tlie  interfer- 
ence that  their  claim  or  claims  which  were  so  involved 
in  the  issue  stand  finally  rejected. 

APPEALS  TO  THE  EXAMINERS  IN  CHIEF  AND  TO 
THE  COMMISSIONER  AND  PETITIONS  TO  THE 
COMMISSIONER  IN  THE  EX  PARTE  PROSECU- 
TION OF  APPLICATIONS. 

133.  Every  applicant  for  a  patent,  any  of  the  claims  of 
whose  application  have  been  twice  rejected  for  the  same 
reasons,  upon  grounds  involving  the  merits  of  the  inven- 
tion, such  as  lack  of  invention,  novelty,  or  utility,  or  on 
the  ground  of  abandonment,  public  use  or  sale,  inopera- 
tiveness of  invention,  aggregation  of  elements,  incom- 
plete combination  of  elements,  or,  when  amended,  for 
want  of  identity  with  the  invention  originally  disclosed, 
or  because  the  amendment  involves  a  departure  from  the 
invention  originally  presented ;  and  every  applicant  who 
has  been  twice  required  to  divide  his  application,  and 
every  applicant  for  the  reissue  of  a  patent  wdiose  claims 
have  been  twice  rejected  for  any  of  the  reasons  above 
enumerated,  or  on  the  ground  that  the  original  patent  is 
not  inoperative  or  invalid,  or  if  so  inoperative  or  invalid 
that  the  errors  which  rendered  it  so  did  not  arise  from 
inadvertence,  accident,  or  mistake,  may,  upon  payment 
of  a  fee  of  $10,  appeal  from  the  decision  of  the  primary 
examiner  to  the  examiners  in  chief.  The  appeal  must 
set  forth  in  writing  the  points  of  the  decision  upon  which 

215 


it  is  taken,  and  must  be  signed  by  the  applicant  or  his 
duly  authorized  attorne}'  or  agent. 

134.  There  must  have  been  two  rejectioiLs  of  the  claims 
as  originally  filed,  or,  if  amended  in  matter  of  substance, 
of  the  amended  claims,  and  all  the  claims  must  have  been 
passed  upon,  and  except  in  cases  of  division  all  prelim- 
inary and  intermediate  questions  relating  to  matters  not 
affecting  the  merits  of  the  invention  settled,  before  the 
case  can  be  appealed  to  the  examiners  in  chief. 

135.  Upon  the  filing  of  the  appeal  the  same  shall  be 
submitted  to  the  primary  examiner,  who,  if  he  find  it  to 
be  regular  in  form,  and  to  relate  to  an  appealable  action, 
shall  within  ten  days  from  the  filing  thereof  furnish  the 
examiners  in  chief  with  a  written  statement  of  the 
grounds  of  his  decision  on  all  the  points  involved  in  the 
appeal,  with  copies  of  the  rejected  claims  and  with  the 
references  applicable  thereto,  giving  a  concise  explana- 
tion of  the  invention  claimed  and  of  the  subject  matter 
of  the  references  so  far  as  pertinent  to  the  appealed 
claims.  The  examiner  shall  at  the  time  of  making  .such 
statement  furnish  a  copy  of  the  same  to  the  appellant. 
If  the  primary  examiner  shall  decide  that  the  appeal  is 
not  regular  in  form  or  does  not  relate  to  an  appealable 
action,  a  petition  from  such  decision  may  be  taken  di- 
rectly to  the  Commissioner,  as  provided  in  Eule  142. 

136  From  the  adverse  decision  of  the  board  of  exam- 
iners in  chief  appeal  may  be  taken  to  the  Commissioner 
in  person,  upon  payment  of  the  fee  of  $20  required  by 
law. 

137.  The  appellant  shall  on  or  before  the  day  of  hear- 
ing file  a  brief  of  the  authorities  and  arguments  on  which 
he  will  rely  to  maintain  his  appeal. 

If  the  appellant  desire  to  be  heard  orally,  he  will  so 
indicate  when  he  files  his  appeal ;  a  day  of  hearing  will 
then  be  fixed,  and  due  notice  thereof  given  him. 

138.  Affidavits  received  after  the  case  has  been  ap- 
pealed will  not  be  admitted  without  remanding  the  ap- 

216 


plication  to  the  primary  examiner  for  reconsideration; 
but  the  appellate  ti'lhuuals  may  in  their  discretion  refuse 
to  remand  the  case  and  proceed  with  the  same  without 
consideration  of  the  alYidavits. 

139.  The  examiners  in  chief  in  their  decision  shall  af- 
firm or  i-everse  the  decision  of  the  primary  examiner  only 
on  the  ])oints  on  which  appeal  shall  have  been  taken. 
(See  Rule  133.)  Should  th(\y  discover  any  apparent 
grounds  not  involved  in  the  appeal  for  granting  or  re- 
fusing letters  patent  in  the  form  claimed,  or  any  other 
form,  they  shall  annex  to  their  decision  a  statement  to 
that  effect  with  such  recommendation  as  they  shall  deem 
proper. 

Should  the  examiners  in  chief  recommend  the  refusal 
of  letters  patent  in  the  form  claimed,  their  recommenda- 
tion will  stand  as  a  rejection  and  will  reopen  the  case  for 
amendment  or  showing  of  fact,  or  both,  before  the  pri- 
mary examiner,  responsive  to  that  rejection.  The  recom- 
mendation of  the  examiners  in  chief  is  binding  upon  the 
primary  examiner  unless  an  amendment  or  showing  of 
facts  not  previousl}^  of  record  be  made  which,  in  the 
opinion  of  the  primary  examiner,  overcomes  the  recom- 
mendation. The  applicant  may  waive  the  right  to  pros- 
ecution before  the  primary  examiner  and  have  the  case 
reconsidered  by  the  examiners  in  chief  upon  the  same 
record,  and  from  an  adverse  decision  of  the  examiners 
in  chief  on  reconsideration,  appeal  will  lie  to  the  Com- 
missioner, as  in  other  cases.  The  applicant  may  also 
waive  reconsideration  by  the  examiners  in  chief  and  ap- 
peal directly  to  the  Commissioner. 

Should  the  examiners  in  chief  recommend  the  grant- 
ing of  letters  patent  in  an  amended  form,  the  applicant 
shall  have  the  right  to  amend  in  conformity  with  such 
recommendation,  which  shall  be  binding  upon  the  pri- 
mar}^  examiner  in  the  absence  of  new  references  or 
grounds  for  rejection. 

If  the  Commissioner,  in  reviewing  the  decision  of  the 

217 


exaniinors  in  cliief,  discovers  any  apparent  grounds  for 
refusing  letters  patent  not  involved  in  the  appeal,  he 
will,  before  or  after  decision  on  the  appeal,  give  reason- 
able notice  thereof  to  the  applicant ;  and  if  any  amend- 
ment or  action  based  thereon  be  proposed,  he  will  remand 
the  case  to  the  primary  examiner  for  consideration. 

140.  Cases  which  have  been  heard  and  decided  b}'  the 
Commissioner  on  appeal  will  not  be  reopened  except  by 
his  order;  cases  which  have  been  decided  by  the  exam- 
iners in  chief  w^ill  not  be  reheard  by  them,  when  no 
longer  pending  before  them,  without  the  written  author- 
ity of  the  Commissioner ;  and  cases  which  have  been  de- 
cided by  either  the  Commissioner  or  the  examiners  in 
chief  will  not  be  reopened  by  the  primary  examiner  with- 
out like  authority,  and  then  only  for  the  consideration  of 
matters  not  already  adjudicated  upon,  sufficient  cause 
being  shown.     (See  Rule  68.) 

141.  After  decision  by  an  appellate  tribunal  the  case 
shall  be  remanded  at  once  to  the  primary  examiner,  sub- 
ject to  the  applicant's  right  of  appeal,  for  such  action  as 
will  carry  into  effect  the  decision,  or  for  such  further 
action  as  the  applicant  is  entitled  to  demand. 

142.  Upon  receiving  a  petition  stating  concisely  and 
clearly  any  proper  questoin  which  has  been  twice  acted 
upon  by  the  examiner,  and  which  does  not  involve  the 
merits  of  the  invention  claimed,  the  rejection  of  a  claim 
or  a  requirement  for  division,  and  also  stating  the  facts 
involved  and  the  point  or  points  to  be  reviewed,  an  order 
will  be  made  directing  the  examiner  to  furnish  a  written 
statement  of  the  grounds  of  his  decision  upon  the  mat- 
ters averred  within  five  days.  The  examiner  shall  at  the 
time  of  making  such  statement  furnish  a  copy  thereof  to 
the  petitioner.  No  fee  is  required  for  such  a  petition. 
Hearing  will  be  grantcnl  in  the  discretion  of  the  Com- 
missioner. 


218 


APPEALS  TO  THE  EXAMINERS  IN  CHIEF  AND  TO 
THE  COMMISSIONER  IN  CONTESTED  CASES. 
14o.   Ill  interference  cases  parties  have  the  same  rem- 
edy by  appeal  to  the  examiners  in  chief  and  to  the  Com- 
missioner as  in  ex  parte  cases. 

144.  Appeals  in  interference  cases  mnst  be  accom- 
panied by  brief  statements  of  the  reasons  therefor.  Par- 
ties will  be  required  to  file  six  copies  of  printed  briefs  of 
their  arguments,  the  appellant  ten  days  before  the  hear- 
ing and  the  appellee  three  days.     (See  Rule  163.) 

145.  The  appellant  shall  have  the  right  to  make  the 
opening  and  closing  arguments,  unless  it  shall  be  other- 
wise ordered  by  the  tribunal  having  jurisdiction  of  the 
case. 

146.  Contested  cases  will  be  regarded  as  pending  be- 
fore a  tribunal  until  the  limit  of  appeal,  which  must  be 
fixed,  has  expired,  or  until  some  action  has  been  had 
which  waives  the  appeal  or  carries  into  effect  the  decision 
from  which  appeal  might  have  been  taken. 

RECONSIDERATION  OF  CASES  DECIDED  BY  FORMER 
COMMISSIONER. 

147.  Cases  which  have  been  decided  by  one  Commis- 
sioner will  not  be  reconsidered  by  his  successor  except  in 
accordance  with  the  principles  which  govern  the  grant- 
ing of  new  trials. 

APPEALS  TO  THE  COURT  OF  APPEALS  OF  THE  DIS- 
TRICT OF  COLUMBIA. 

148.  From  the  adverse  decision  of  the  Commissioner 
upon  the  claims  of  an  application  and  in  interference 
cases,  an  appeal  may  be  taken  to  the  Court  of  Appeals 
of  the  District  of  Columbia  in  the  manner  prescribed  by 
the  rules  of  that  court.     (See  Appendix,  pp.  95-102.) 

149.  When  an  appeal  is  taken  to  the  Court  of  Appeals 
of  the  District  of  Columbia,  the  appellant  shall  give  no- 
tice thereof  to  the  Commissioner,  and  file  in  the  Patent 

219 


Office,  within  forty  days,  exclusive  of  Sundays  and  holi- 
days but  including  Saturday  half  holidays,  from  the  date 
of  the  decision  appealed  from,  his  reasons  of  appeal  spe- 
cifically set  forth  in  writing. 

150.  Pro  forma  proceedings  will  not  be  had  in  the 
Patent  Office  for  the  purpose  of  securing  to  applicants 
an  appeal  to  the  Court  of  Appeals  of  the  District  of  Co- 
lumbia. 

(For  forms  of  appeals  and  rules  of  the  Court  of  Ap- 
peals of  the  District  of  Columbia  respecting  appeals,  see 
Appendix,  pp.  95-102.) 

HEARINGS. 

151.  Hearings  will  be  had  by  the  Commissioner  at  10 
o'clock  a.  m.,  and  by  the  board  of  examiners  in  chief  at  1 
o'clock  p.  m.,  and  by  the  examiner  of  interferences  upon 
interlocutory  matters  at  10  o'clock  a.  m.,  and  upon  final 
hearings  at  11  o'clock  a.  m.,  on  the  day  appointed  unless 
some  other  hour  be  specifically  designated.  If  either 
party  in  a  contested  case,  or  the  appellant  in  an  ex  parte 
case,  appear  at  the  proper  time,  he  will  be  heard.  After 
the  day  of  hearing,  a  contested  case  will  not  be  taken  up 
for  oral  argument  except  by  consent  of  all  parties.  If 
the  engagements  of  the  tribunal  having  jurisdiction  be 
such  as  to  prevent  the  case  from  being  taken  up  on  the 
day  of  hearing,  a  new  assignment  will  be  made,  or  the 
case  will  be  continued  from  day  to  day  until  heard.  Un- 
less it  shall  be  otherwise  ordered  before  the  hearing  be- 
gins, oral  arguments  will  be  limited  to  one  hour  for  each 
party  in  contested  cases,  and  to  one-half  hour  in  other 
cases.  After  a  contested  ease  has  been  argued,  nothing 
further  relating  thereto  will  be  heard  unless  upon  re- 
quest of  the  tribunal  having  jurisdiction  of  the  case :  and 
all  interviews  for  this  purpose  with  parties  in  interest  or 
their  attorneys  will  be  invariably  denied. 

152.  Hearings  in  ex  parte  and  contested  cases  will,  as 
far  as  is  convenient  and   ]iropor,  bo  set.  advanced,  and 

220 


adjourned  to  meet  the  wishes  of  the  parties  and  tlieir  at- 
torneys. 

MOTIONS. 

153.  In  contested  cases  reasonable  notice  of  all  mo- 
tions, and  copies  of  motion  papers  and  affidavits,  must 
be  served  as  provided  in  Rule  154  (&).  Proof  of  such 
service  must  be  made  before  the  motion  will  be  enter- 
tained by  the  office.  Motions  will  not  be  heard  in  the 
absence  of  either  party  except  upon  default  after  due 
notice.  Motions  will  be  heard  in  the  first  instance  by  the 
officer  or  tribunal  before  wdiom  the  particular  case  may 
be  pending-.  In  original  hearings  on  motions  the  moving 
parties  shall  have  the  right  to  make  the  opening  and 
closing  arguments.  In  contested  cases  the  practice  on 
points  to  which  the  rules  are  not  applicable  shall  con- 
form as  nearly  as  possible,  to  that  of  the  United  States 
courts  in  equity  proceedings. 

TESTIMONY  IN  INTERFERENCES  AND  OTHER  CON- 
TESTED CASES. 

154.  The  following  rules  have  been  established  for 
taking  and  transmitting  testimony  in  interferences  and 
other  contested  cases : 

(a)  Before  the  depositions  of  witnesses  shall  be  taken 
by  either  party  due  notice  shall  be  given  to  the  opposing 
party,  as  hereinafter  provided,  of  the  time  when  and 
place  where  the  depositions  will  be  taken,  of  the  cause  or 
matter  in  which  they  are  to  be  used,  and  of  the  names 
and  residences  of  the  witnesses  to  be  examined,  and  the 
opposing  party  shall  have  full  opportunity,  either  in  per- 
son or  by  attorney,  to  cross-examine  the  witnesses.  If 
the  opposing  party  shall  attend  the  examination  of  wit- 
nesses not  named  in  the  notice,  and  shall  either  cross- 
examine  such  witnesses  or  fail  to  object  to  their  examina- 
tion, he  shall  be  deemed  to  have  waived  his  right  to  object 
to  such  examination  for  want  of  notice.  Neither  party 
shall  take  testimony  in  more  than  one  place  at  the  same 

221 


time,  nor  so  nearly  at  the  same  time  that  reasonable  op- 
portunity for  travel  from  one  place  of  examination  to  the 
other  can  not  be  had. 

(b)  The  notice  for  taking  testimony  or  for  motions 
must  be  served  (unless  otherwise  stipulated  in  an  instru- 
ment in  writing  filed  in  the  case)  upon  the  attorney  of 
record,  if  there  be  one,  or,  if  there  be  no  attorney  of  rec- 
ord, upon  the  adverse  party.  Reasonable  time  must  be 
given  therein  for  such  adverse  party  to  reach  the  place 
of  examination.  Service  of  such  notice  may  be  made  in 
either  of  the  following  ways:  (1)  By  delivering  a  copy 
of  the  notice  to  the  adverse  party  or  his  attorney;  (2) 
by  leaving  a  copy  at  the  usual  place  of  business  of  the 
adverse  party  or  his  attorney  with  some  one  in  his  em- 
ployment; (3)  when  such  adverse  party  or  his  attorney 
has  no  usual  place  of  business,  by  leaving  a  copy  at  his 
residence,  with  a  member  of  his  family  over  14  years  of 
age  and  of  discretion;  (4)  transmission  by  registered 
letter;  (5)  b}"  express.  "Whenever  it  shall  be  satisfactor- 
ily shown  to  the  Commissioner  that  neither  of  the  above 
modes  of  obtaining  or  reserving  notice  is  practicable,  the 
notice  maj^  be  published  in  the  Official  Gazette.  Such 
notice  shall,  with  sworn  proof  of  the  fact,  time,  and 
mode  of  service  thereof,  be  attached  to  the  deposition  or 
depositions,  whether  the  opposing  party  shall  have  cross- 
examined  or  not. 

(c)  Each  witness  before  testifying  shall  be  duly  sworn 
according  to  law  by  the  officer  before  whom  his  deposi- 
tion shall  be  taken.  The  deposition  shall  be  carefully 
read  o^'er  hy  the  witness,  or  by  the  officer  to  him,  and 
shall  then  be  subscribed  by  the  witness  in  the  presence  of 
the  officer.  Tlie  officer  shall  annex  to  the  deposition  his 
certificate  showing  (1)  the  due  administration  of  the 
oath  by  the  officer  to  the  witness  before  the  commence- 
ment of  Ills  testimony;  (2)  the  name  of  the  person  by 
whom  tiie  testimony  was  written  out,  and  the  fact  that, 
if  not  written  by  the  officer,  it  was  written  in  his  prcs- 

222 


ence;  (3)  tlie  presence  or  absence  of  the  adverse  party; 
(4)  the  phice,  day,  and  hour  of  commencing  and  taking 
the  deposition;  (5)  the  reading  by,  or  to,  each  witness  of 
his  deposition  before  he  signs  the  same ;  and  (6)  the  fact 
tliat  the  officer  was  not  connected  by  blood  or  marriage 
with  either  of  the  parties,  nor  interested,  directly  or  indi- 
rectly, in  the  matter  in  controversy.  The  officer  shall 
sign  the  certificate  and  affix  thereto  his  seal  of  office,  if 
he  have  such  seal.  He  shall  then,  without  delay,  securely 
seal  up  all  the  evidence,  notices,  and  paper  exhibits,  in- 
scribe upon  the  envelop  a  certificate  giving  the  title  of 
the  case,  the  name  of  each  witness,  and  the  date  of  seal- 
ing, address  the  package,  and  forward  the  same  to  the 
Commissioner  of  Patents.  If  the  weight  or  bulk  of  an 
exhibit  shall  exclude  it  from  the  envelop,  it  shall  be  au- 
thenticated by  the  officer  and  transmitted  in  a  separate 
package,  marked  and  addressed  as  above  provided. 

(d)  If  a  party  shall  be  unable  to  take  any  testimony 
within  the  time  limited,  and  desire  an  extension  for  such 
purpose,  he  must  file  a  motion,  accompanied  by  a  state- 
ment under  oath  setting  forth  specifically  the  reason  why 
such  testimony  has  not  been  taken,  and  distinctly  aver- 
ring that  such  motion  is  made  in  good  faith,  and  not  for 
the  purpose  of  delay.  If  either  party  shall  be  unable  to 
procure  the  testimony  of  a  witness  or  witnesses  within 
the  time  limited,  and  desire  an  extension  for  such  pur- 
pose, he  must  file  a  motion,  accompanied  bj^  a  statement 
under  oath  setting  forth  the  cause  of  such  inability,  the 
name  or  names  of  such  witness  or  witnesses,  the  facts 
expected  to  be  proved  by  such  witness  or  witnesses,  the 
steps  which  have  beeji  taken  to  procure  such  testimony, 
and  the  dates  on  which  efforts  have  been  made  to  procure 
it.    (See  Rule  153.) 

(e)  Upon  notice  given  to  the  opposite  party  before  the 
closing  of  the  testimony,  any  official  record,  and  any  spe- 
cial matter  contained  in  a  printed  publication,  if  com- 


223 


petent  evidence  and  pertinent  to  the  issue,  may  be  used 
as  evidence  at  the  hearing. 

(/)  All  depositions  which  are  taken  must  be  duly  filed 
in  the  Patent  Office.  On  refusal  to  file,  the  otfice  at  its 
discretion  will  not  further  hear  or  consider  the  contest- 
ant with  whom  the  refusal  lies ;  and  the  office  may,  at 
its  discretion,  receive  and  consider  a  copy  of  the  withheld 
deposition,  attested  by  such  evidence  as  is  procurable. 

155.  The  pages  of  each  deposition  must  be  numbered 
consecutiveh',  and  the  name  of  the  witness  plainly  and 
conspicuously  written  at  the  top  of  each  page.  The  testi- 
mony must  be  written  upon  legal  cap  or  foolscap  paper, 
with  a  wide  margin  on  the  left-hand  side  of  the  page, 
and  with  the  writing  on  one  side  onlj'  of  the  sheet. 

156.  The  testimony  will  be  taken  in  answer  to  inter- 
rogatories, with  the  questions  and  answers  committed  to 
writing  in  their  regular  order"  by  the  officer,  or,  in  his 
presence,  b}^  some  person  not  interestecl  in  the  case  either 
as  a  party  thereto  or  as  attorney.  But  with  the  written 
consent  of  the  parties  the  testimony  ma.y  be  taken  sten- 
ographically,  and  the  deposition  may  be  written  out  by 
other  persons  in  the  presence  of  the  officer. 

Where  testimony  is  taken  stenographically,  a  long- 
hand or  typewritten  cop.y  shall  be  read  to  the  witness,  or 
read  over  by  him,  as  soon  as  it  can  be  made,  and  shall  be 
signed  by  him  as  provided  in  paragraph  3  of  Rule  154. 
No  officer  who  is  connected  by  blood  or  marriage  with 
either  of  the  parties,  or  interested,  directly  or  indirectly, 
in  the  matter  in  controversy,  either  as  counsel,  attorney, 
agent,  or  otherwise,  is  comjietent  to  take  depositions,  un- 
less with  tlie  written  consent  of  all  the  parties. 

157.  Upon  motion  duly  made  and  granted  (see  Rule 
153)  testimony  taken  in  an  interference  proceeding  may 
bo  used  in  any  otlier  or  subse((uent  interference  proceed- 
ing, so  far  as  relevant  and  material,  subject,  however,  to 
the  right  of  any   contesting  party  to  recall  witnesses 

224 


whose  depositions  have  been  taken,  and  to  take  other  tes- 
timony in  rebuttal  of  the  depositions. 

158.  Upon  motion  duly  made  and  granted  (see  Rule 
153)  testimony  may  be  taken  in  foreign  countries,  upon 
complying  with  the  following  requirements  : 

{a)  The  motion  must  designate  a  place  for  the  exam- 
ination of  the  witnesses  at  which  an  officer  duly  (Qualified 
to  take  testimony  under  the  laws  of  the  United  States  in 
a  foreign  country  shall  reside,  and  it  must  be  accom- 
panied by  a  statement  under  oath  that  the  motion  is 
made  in  good  faith,  and  not  for  purposes  of  delay  or  of 
vexing  or  harassing  any  party  to  the  case;  it  must  also 
set  forth  the  names  of  the  witnesses,  the  particular  facts 
to  which  it  is  expected  each  will  testify,  and  the  grounds 
on  which  is  based  the  belief  that  each  will  so  testify. 

(&)  It  must  appear  that  the  testimony  desired  is  ma- 
terial and  competent,  and  that  it  can  not  be  taken  in  this 
country  at  all,  or  can  not  be  taken  here  without  hardship 
and  injury  to  the  moving  party  greatly  exceeding  that  to 
which  the  opposite  party  will  be  exposed  by  the  taking  of 
such  testimony''  abroad. 

(c)  Upon  the  granting  of  such  motion,  a  time  will  be 
set  within  which  the  moving  party  shall  file  in  duplicate 
the  interrogatories  to  be  propounded  to  each  witness,  and 
serve  a  copy  of  the  same  upon  each  adverse  party,  who 
may,  within  a  designated  time,  file,  in  duplicate,  cross- 
interrogatories.  Objections  to  any  of  the  interrogatories 
or  cross-interrogatories  may  be  filed  at  any  time  before 
the  depositions  are  taken,  and  such  objections  will  be 
considered  and  determined  upon  the  hearing  of  the  case. 

{d)  As  soon  as  the  interrogatories  and  cross-interroga- 
tories are  decided  to  be  in  proper  form,  the  Commis- 
sioner will  cause  them  to  be  forwarded  to  the  proper  of- 
ficer, with  the  request  that,  upon  payment  of,  or  satis- 
factory security  for,  his  official  fees,  he  notify  the  wit- 
nesses named  to  appear  before  him  within  a  designated 
time  and  make  answer  thereto  under  oath;  and  that  he 
17  225 


reduce  their  answers  to  writing,  aud  transmit  the  same, 
under  his  official  seal  and  signature,  to  the  Commis- 
sioner of  Patents,  with  the  certificate  prescribed  in  Rule 
154  (c). 

(e)  By  stipulation  of  the  parties  the  requirements  of 
paragraph  (c)  as  to  written  interrogatories  and  cross- 
interrogatories  may  be  dispensed  with,  and  the  testimony 
may  be  taken  before  the  proper  officer  upon  oral  inter- 
rogatories by  the  parties  or  their  agents. 

(/)  Unless  false  swearing  in  the  gi^'ing  of  such  testi- 
mony before  the  officer  taking  it  shall  be  punishable  as 
perjury  under  the  laws  of  the  foreign  state  where  it  shall 
be  taken,  it  will  not  stand  on  the  same  footing  in  the 
Patent  Office  as  testimony  duly  taken  in  the  United 
States ;  but  its  weight  in  each  case  will  be  determined  by 
the  tribunal  having  jurisdiction  of  such  case. 

159.  E^'idence  touching  the  matter  at  issue  will  not  be 
considered  on  the  hearing  which  shall  not  have  been 
taken  and  filed  in  compliance  with  these  rules.  But  no- 
tice will  not  be  taken  of  merely  formal  or  technical  ob- 
jections which  shall  not  appear  to  have  wrought  a  sub- 
stantial injury  to  the  party  raising  them ;  and  in  case  of 
such  injury  it  must  be  made  to  appear  that,  as  soon  as 
the  party  became  aware  of  the  ground  of  objection,  he 
gave  notice  thereof  to  the  office,  and  also  to  the  opposite 
party,  informing  him  at  the  same  time  that,  unless  it  be 
removed,  he  (the  objector)  will  urge  his  objection  at  the 
hearing.  This  rule  is  not  to  be  so  construed  as  to  modify 
established  rules  of  evidence,  which  will  be  applied  strict- 
ly in  all  practice  before  the  office. 

160.  The  law  requires  the  clerks  of  the  various  courts 
of  the  United  States  to  issue  subpoenas  to  secure  the  at- 
tendance of  witnesses  whose  depositions  are  desired  as 
evidence  in  contested  ca.ses  in  the  Patent  Office. 

101.  After  testimony  is  filed  in  the  office  it  may  be 
inspected  by  any  party  to  the  case,  but  it  can  not  be 
witlidrawn  for  the  purpo.se  of  printing.    It  may  be  print- 

22C) 


ed  by  some  one  speeially  desif^iiated  by  the  office  for  that 
purpose,  under  proper  restrictions. 

162.  Thirty-one  or  more  printed  copies  of  the  testi- 
mony must  be  furnished — five  for  the  use  of  the  office, 
one  for  each  of  the  opposing  parties,  and  twenty -five  for 
the  Court  of  Appeals  of  the  District  of  Columbia,  should 
appeal  be  taken.  If  no  appeal  be  taken,  the  twenty -five 
copies  will  be  returned  to  the  party  filing  them.  The 
preliminary  statement  required  by  Rule  110  must  be 
printed  as  a  part  of  the  record.  These  copies  of  the  rec- 
ord of  the  junior  party's  testimony  must  be  filed  not 
less  than  forty  daj  s  before  the  day  of  final  hearing,  and 
in  the  case  of  the  senior  party  not  less  than  twenty  days. 
The}''  will  be  of  the  same  size,  both  page  and  print,  as  the 
Rules  of  Practice,  with  the  names  of  the  witnesses  at  the 
top  of  the  pages  over  their  testimony,  and  will  contain 
indexes  with  the  names  of  all  witnesses  and  reference 
to  the  pages  where  copies  of  papers  and  documents  in- 
troduced as  exhibits  are  shown. 

When  it  shall  appear,  on  motion  duly  made  and  by 
satisfactory  proof,  that  a  party,  by  reason  of  poverty,  is 
unable  to  print  his  testimony,  the  printing  may  be  dis- 
pensed with;  but  in  such  case  typewritten  copies  must 
be  furnished — one  for  the  office  and  one  for  each  adverse 
party.  Printing  of  the  testimony  can  not  be  dispensed 
with  upon  the  stipulation  of  the  parties  without  the  ap- 
proval of  the  Commissioner. 

BRIEFS. 

163.  Briefs  at  final  hearing  and  on  appeals  from  final 
decisions  in  contested  cases  shall  be  submitted  in  printed 
form  and  shall  be  of  the  same  size  and  the  same  as  to 
page  and  print  as  the  printed  copies  of  testimony.  But 
in  case  satisfactory  reason  therefor  is  shown,  typewritten 
briefs  may  be  submitted.  Six  copies  of  the  briefs  at  final 
hearing  shall  be  filed  three  days  before  the  hearing. 
Briefs  on  appeals  shall  be  filed  as  provided  in  Rule  144. 

227 


At  interlocutory  hearings  and  on  appeal  from  interloc- 
utory decisions  typewritten  briefs  may  be  used,  and  such 
briefs  may  be  filed  at  or  before  the  hearing.  By  stipula- 
tion of  the  parties  or  by  order  of  the  tribunal  before 
whom  the  hearing  is  had  briefs  may  be  filed  otherwise 
than  as  here  prescribed. 

ISSUE. 

164.  If,  on  examination,  it  shall  appear  that  the  appli- 
cant is  justly  entitled  to  a  jDateut  under  the  law,  a  notice 
of  allowance  will  be  sent  him  or  his  attorney,  calling  for 
the  payment  of  the  final  fee  within  six  months  from  the 
date  of  such  notice  of  allowance,  upon  the  receipt  of 
which  within  the  time  fixed  by  law  the  patent  will  be 
prepared  for  issue.    (See  Rules  167,  194.) 

165.  After  notice  of  the  allowance  of  an  application  is 
given,  the  case  will  not  be  withdrawn  from  issue  except 
by  approval  of  the  Commissioner,  and  if  withdrawn  for 
further  action  on  the  part  of  the  office  a  new  notice  of 
allowance  will  be  given.  When  the  final  fee  has  been 
paid  upon  an  application  for  letters  patent,  and  the  case 
has  received  its  date  and  number,  it  will  not  be  with- 
drawn from  issue  on  account  of  any  mistake  or  change 
of  purpose  of  the  applicant  or  his  attorney,  nor  for  the 
purpose  of  enabling  the  inventor  to  procure  a  foreign 
patent,  nor  for  any  other  reasons  except  mistake  on  the 
part  of  the  office,  or  because  of  fraud,  or  illegality  in  the 
application,  or  for  interference.     (See  Rule  78.) 

166.  Whenever  the  Commissioner  shall  direct  the  with- 
drawal of  an  application  from  issue  on  request  of  an  ap- 
plicant for  reasons  not  prohibited  by  Rule  165,  this  with- 
drawal will  not  operate  to  stay  the  period  of  one  year 
running  against  the  application,  which  begins  to  attach 
fi-din  the  date  of  the  notice  of  allowance. 

DATE,  DURATION,  AND  FORM  OF  PATENTS. 

167.  Every  j)atent  sliall  issue  within  a  period  of  three 
months  from  the  date  of  the  payment  of  the  final  fee, 

228 


which  fee  shall  he  paid  not  later  than  six  months  from 
the  time  a1  wiiieh  the  application  was  passed  and  allowed 
and  notice  thereof  was  sent  to  the  applicant  or  his  agent; 
and  if  the  final  fee  be  not  paid  within  that  period  the 
patent  shall  be  withlield.  (See  Rule  175.)  In  the  ab- 
sence of  request  to  suspend  issue  the  patent  will  issue  in 
regular  course.  The  issue  closes  weekly  on  Thursday, 
and  the  patents  bear  date  as  of  the  fourtli  Tuesday  there- 
after. 

A  patent  will  not  be  antedated. 

168.  Every  patent  will  contain  a  short  title  of  the  in- 
vention or  discovery  indicating  its  nature  and  object,  and 
a  grant  to  the  patentee,  his  heirs  and  assigns,  for  the 
term  of  seventeen  years,  of  the  exclusive  right  to  make, 
use,  and  vend  the  invention  or  discovery  throughout  the 
United  States  and  the  Territories  thereof.  The  duration 
of  a  design  patent  may  be  for  the  term  of  three  and  one- 
half,  seven,  or  fourteen  years,  as  provided  in  Rule  80. 
A  copy  of  the  specifications  and  drawings  will  be  an- 
nexed to  the  patent  and  form  part  thereof. 

DELIVERY. 

169.  The  patent  will  be  delivered  or  mailed  on  the  day 
of  its  date  to  the  attorney  of  record,  if  there  be  one ;  or, 
if  the  attorney  so  request,  to  the  patentee  or  assignee  of 
an  interest  therein;  or,  if  there  be  no  attorney,  to  the 
patentee  or  to  the  assignee  of  the  entire  interest,  if  he  so 
request. 

CORRECTION  OF  ERRORS  IN  LETTERS  PATENT. 

170.  Whenever  a  mistake,  incurred  through  the  fault 
of  the  office,  is  clearly  disclosed  by  the  records  or  files  of 
the  office,  a  certificate,  stating  the  fact  and  nature  of  such 
mistake,  signed  by  the  Commissioner  of  Patents,  and 
sealed  with  the  seal  of  the  Patent  OlSce,  will,  at  the  re- 
quest of  the  patentee  or  his  assignee,  be  indorsed  without 
charge  upon  the  letters  patent,  and  recorded  in  the  rec- 

229 


ords  of  patents,  and  a  printed  copy  thereof  attached  to 
each  printed  copy  of  the  specification  and  drawing. 

Whenever  a  mistake,  incurred  through  the  fault  of 
the  office,  constitutes  a  sufficient  legal  ground  for  a  re- 
issue, the  reissue  will  be  made,  for  the  correction  of  such 
mistake  only,  without  charge  of  office  fees,  at  the  request 
of  the  patentee. 

Mistakes  not  incurred  through  the  fault  of  the  office, 
and  not  affording  legal  grounds  for  reissues,  will  not  be 
corrected  after  the  delivery  of  the  letters  patent  to  the 
patentee  or  his  agent. 

Changes  or  corrections  will  not  be  made  in  letters  pat- 
ent after  the  delivery  thereof  to  the  patentee  or  his  at- 
torney, except  as  above  provided. 

ABANDONED,  FORFEITED,  REVIVED,  AND  RENEWED 
APPLICATIONS. 

171.  An  abandoned  application  is  one  in  which  all  the 
essential  parts  have  not  been  filed  so  that  it  is  completed 
and  prepared  for  examination  within  a  period  of  one 
year,  or  which  the  applicant  has  failed  to  prosecute  with- 
in one  year  after  any  action  therein  of  which  notice  has 
been  duly  given  (see  Rules  31  and  77),  or  which  the  ap- 
plicant has  expressly  abandoned  by  filing  in  the  office  a 
written  declaration  of  abandonment,  signed  by  himself 
and  assignee,  if  any,  identifying  his  application  by  title 
of  invention,  serial  number,  and  date  of  filing.  (See 
Rule  60.) 

Prosecution  of  an  application  to  save  it  from  abandon- 
ment must  include  such  proper  action  as  the  condition 
of  the  case  may  require.  The  admission  of  an  amend- 
ment not  responsive  to  the  last  official  action,  or  refusal 
to  admit  the  same,  and  any  proceedings  relative  thereto, 
sluill  not  operate  to  save  tiie  application  from  abandon- 
iiiciil  under  section  4894  of  the  Revised  Statutes. 

172.  Jiefore  an  ai)])lication  abandoned  by  failure  to 
complete  or  prosecute  can  be  revived  as  a  pending  appli- 

230 


cation  it  must  be  shown  to  the  satisfaction  of  the  Com- 
missioner that  the  dehiy  was  nnavoidahle. 

173.  Wlien  a  new  application  is  fihMl  in  place  of  an 
abandoned  or  rejected  application,  a  new  petition,  speci- 
fication, oath,  and  fee  will  be  required ;  but  the  old  draw- 
ing, if  suitable,  may  be  used  upon  the  filing  of  suitable 
permanent  photographic  copies  thereof. 

174.  A  forfeited  application  is  one  upon  which  a  pat- 
ent has  been  withheld  for  failure  to  pay  the  final  fee 
within  the  prescribed  time.     (See  Rule  167.) 

175.  When  the  patent  has  been  withheld  by  reason  of 
nonpayment  of  the  final  fee,  any  person,  whether  in- 
ventor or  assignee,  who  has  an  interest  in  the  invention 
for  which  the  patent  was  ordered  to  issue  may  file  a 
renewal  of  the  application  for  the  same  invention ;  but 
any  renewal  application  must  be  made  within  two  years 
after  the  allowance  of  the  original  application.  Upon 
the  hearing  of  the  new  application  abandonment  will  be 
considered  as  a  question  of  fact. 

176.  In  a  renewal  the  oath,  petition,  specification, 
drawing,  and  model  of  the  original  application  may  be 
used ;  but  a  new  fee  will  be  required.  The  renewal  ap- 
plication will  not  be  regarded  for  all  purposes  as  a  con- 
tinuation of  the  original  one,  but  must  bear  date  from 
the  time  of  renewal  and  be  subject  to  examination  like 
an  original  application. 

'    177.  Forfeited  and  abandoned  applications  will  not  be 
cited  as  references. 

178.  Notice  of  the  filing  of  subsequent  applications  will 
not  be  given  to  applicants  while  their  cases  remain  for- 
feited. 

179.  Copies  of  the  files  of  forfeited  and  abandoned  ap- 
plications may  be  furnished  when  ordered  by  the  Com- 
missioner. The  requests  for  such  copies  must  be  pre- 
sented in  the  form  of  a  petition  properly  verified  as  to 
all  matters  not  appearing  of  record  in  the  Patent  Office. 
(See  Form  35.) 

231 


EXTENSIONS. 

180.  Patents  can  not  be  extended  except  by  act  of 
Congress. 

DISCLAIMERS. 

181.  Whenever,  through  inadvertence,  accident,  or 
mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, a  patentee  has  claimed  as  his  invention  or  discovery 
more  than  he  had  a  right  to  claim  as  new,  his  patent  will 
be  valid  for  all  that  part  which  is  truly  and  justly  his 
own,  provided  the  same  is  a  material  or  substantial  part 
of  the  thing  patented ;  and  any  such  patentee,  his  heirs 
or  assigns,  whether  of  the  w^hole  or  any  sectional  interest 
therein,  may,  on  payment  of  the  fee  required  by  law 
($10),  make  disclaimer  of  such  parts  of  the  thing  pat- 
ented as  he  or  they  shall  not  choose  to  claim  or  to  hold 
by  virtue  of  the  patent  or  assignment,  stating  therein  the 
extent  of  his  interest  in  such  patent.  Such  disclaimer 
shall  be  in  writing,  attested  by  one  or  more  witnesses, 
and  recorded  in  the  Patent  Office ;  and  it  shall  thereafter 
be  considered  as  part  of  the  original  specification  to  the 
extent  of  the  interest  possessed  by  the  claimant  and  by 
those  claiming  under  him  after  the  record  thereof.  But 
no  such  disclaimer  shall  affect  any  action  pending  at  the 
time  of  filing  the  same,  except  as  to  the  question  of  un- 
reasonable neglect  or  delaj'  in  filing  it. 

182.  The  statutory  disclaimers  treated  of  in  Rule  181 
are  to  be  distinguished  from  those  which  are  embodied 
in  original  or  reissue  applications,  as  first  filed  or  subse- 
(iuentl\-  amended,  referring  to  matter  shown  or  described, 
but  to  wliicli  the  dischiiniant  does  not  choose  to  claim 
title,  and  also  from  those  made  to  avoid  the  continuance 
of  an  interference.  The  disehiimers  falling  within  this 
present  rub'  must  be  signed  by  the  applicant  in  person 
and  refpiire  no  fee.  (See  Rule  107.  For  forms  of  dis- 
claimers see  Appendix,  Forms  28  and  29.) 


232 


ASSIGNMENTS. 

183.  Every  i)aten1  or  ;iiiy  interest  thei'eiii  is  assignable 
in  law  by  an  iiistrinnent  in  vvritiiifi';  and  the  patentee  or 
his  assigns  or  legal  representatives  may,  in  like  manner, 
grant  and  convey  an  exclusive  right  under  the  patent  to 
the  whole  or  any  specified  part  of  the  United  States. 

184.  Interest  in  patents  may  be  vested  in  assignees,  in 
grantees  of  exclusive  territorial  rights,  in  mortgagees, 
and  in  licensees. 

(a)  An  assignee  is  a  transferee  of  the  whole  interest 
of  the  original  patent  or  of  an  undivided  part  of  such 
whole  interest,  extending  to  every  portion  of  the  United 
States.  The  assignment  must  be  written  or  printed  and 
duly  signed. 

(6)  A  grantee  acquires  by  the  grant  the  exclusive 
right,  under  the  patent,  to  make,  use,  and  vend,  and  to 
grant  to  others  the  right  to  make,  use,  and  vend,  the  thing- 
patented  within  and  throughout  some  specified  part  of 
the  United  States,  excluding  the  patentee  therefrom. 
The  grant  must  be  written  or  printed  and  be  duly  signed. 

(c)  A  mortgage  must  be  written  or  printed  and  be 
duly  signed. 

(d)  A  licensee  takes  an  interest  less  than  or  dififerent 
from  either  of  the  others.  A  license  may  be  oral,  writ- 
ten, or  printed,  and  if  written  or  printed,  must  be  duly 
signed. 

185.  An  assignment,  grant,  or  conveyance  of  a  patent 
will  be  void  as  against  any  subsequent  purchaser  or 
mortgagee  for  a  valuable  consideration  without  notice 
unless  recorded  in  the  Patent  Office  within  three  months 
from  the  date  thereof. 

If  any  assignment,  grant,  or  conveyance  of  any  patent 
shall  be  acknowledged  before  any  notary  public  of  the 
several  States  or  Territories  or  the  District  of  Columbia, 
or  any  commissioner  of  the  United  States  circuit  court, 
or  before  any  secretary  of  legation  or  consular  officer  au- 
thorized to  administer  oaths  or  perform  notarial  acts 

233 


under  section  1750  of  the  Revised  Statutes,  the  certificate 
of  such  acknowledgment,  under  the  hand  and  official  seal 
of  such  notary  or  other  officer,  shall  be  prima  facie  evi- 
dence of  the  execution  of  such  assignment  or  convej'ance. 

186.  No  instrument  will  be  recorded  which  is  not  in 
the  English  language  and  which  does  not,  in  the  judg- 
ment of  the  Commissioner,  amount  to  an  assignment, 
grant,  mortgage,  lien,  incumbrance,  or  license,  or  which 
does  not  affect  the  title  of  the  patent  or  invention  to 
which  it  relates.  Such  instrument  should  identify  the 
patent  by  date  and  number ;  or,  if  the  invention  be  un- 
patented, the  name  of  the  inventor,  the  serial  number, 
and  date  of  the  application  should  be  stated. 

187.  Assignments  M^hich  are  made  conditional  on  the 
performance  of  certain  stipulations,  as  the  payment  of 
money,  if  recorded  in  the  office  are  regarded  as  absolute 
assignments  until  canceled  with  the  written  consent  of 
both  parties  or  by  the  decree  of  a  competent  court.  The 
office  has  no  means  for  determining  whether  such  condi- 
tions have  been  fulfilled. 

188.  In  every  case  where  it  is  desired  that  the  patent 
issue  to  an  assignee,  the  assignment  must  be  recorded  in 
the  Patent  Office  at  a  date  not  later  than  the  day  on 
which  the  final  fee  is  paid.  (See  Rule  26.)  The  date  of 
the  record  is  the  date  of  the  receipt  of  the  assignment  at 
the  office. 

189.  The  receipt  of  assignments  is  generally  acknowl- 
edged by  the  office.  They  are  recorded  in  regular  order 
as  promptly  as  possible,  and  then  transmitted  to  the  per- 
sons entitled  to  them.  (For  form  of  assignment,  see  Ap- 
pendix, forms  38-43.) 

OFFICE  FEES. 

190.  Nearly  all  the  fees  payable  to  the  Patent  Office 
are  positively  required  by  law  to  be  paid  in  advance — 
that  is,  upon  making  application  for  any  action  by  the 
office  fof  wliicli  a  fee  is  payable.     For  the  sake  of  uni- 

234 


formity  and  eonvenience,  the  remaining  fees  will  be  re- 
({uired  to  be  paid  in  tlie  same  manner. 

191.  The  following  is  the  schedule  of  fees  and  of  prices 
of  publications  of  the  Patent  Office : 

On  filiiif^  eacli  origiiuil   ajiiilic-atioii   for  a   [lateiii,   cxeei)!   in 

(leHijiii    cases    $1;").00 

On  issning  ea^-li  original  patent,  except  in  design  cases  ....    20.00 
In  design  cases: 

For  3  years  and  (i  inontlis   10 .  00 

For  7  years   15 .  00 

For  14  years   30 .  00 

On  every  application  for  the  reissue  of  a  })atent   30.00 

On  filing  each  disclaimer    10.00 

On  an  appeal  for  the  first  time  from  the  Primary  Exam- 
iner to  the  Examiners  in  Chief    10.00 

On  ever}'  appeal  from  the  Examiners  in  Chief  to  the  Com- 
missioner     20.00 

For  certified  copies  of  patents  if  in  print : 

For  specification  and  dra\Ying,  per  copy 05 

For  the  certificate    25 

For  the  grant   50 

For  certifying  to  a  duplicate  of  a  model 50 

For  manuscript   copies  of  records,  for  everj'   100   words  or 

fraction    thereof     10 

If  certified,  for  the  certificate  additional 25 

For  20-coupon  orders,  each  coupon  good  for  one  cojiy  of  a 
printed  specification  and  drawing,  and  receivable  in  pay- 
ment for  photographic  prints    1 .  00 

For  100  coupons  in  stub  book  5 .  00 

For  uncertified  copies  of  the  specifications  and  accompany- 
ing dr.awings  of  patents,  if  in  print,  each, 10 

For  the  drawings,  if  in  print 05 

For  copies  of  drawings  not  in  print,  the  I'casonable  cost  of 

making  them. 
For  photo  prints  of  drawings,  for  each  sheet  of  drawings: 

Size  10  by  15  inches,  per  copy 25 

Size  S  by  12i/o  inches,  per  copy 15 

For  recording  every  assignment,  agreement,  power  of  attor- 
ney, or  other  paper,  of  300  words  or  under 1.00 

Of  over  300  and  under  1,000  words 2.00 

For  each  additional  1,000  words  or  fraction  thereof  ...      1.00 
For  abstracts  of  title  to  patents  or  inventions: 

For  the  search,  one  hour  or  less,  and  certificate 1 .  00 

235 


Each  additional  hour  or  fraction  thereof 50 

For  each  brief  from  the  digest  of  assignments,  of  20U 

words  or  less 20 

Each  additional  100  words  or  fraction  therpof 10 

For  searching  titles  or  records,  one  hour  or  less 50 

Each  additional  hour  or  fraction  thereof 50 

For  assistance  to  attorneys  in  the  examination  of  publica- 
tions in  the  Scientific  Library,  one  hour  or  less 1 .  00 

Each  additional  hour  or  fraction  thereof 1.00 

For  copies  of  matter  in  any  foreign  language,  for  every  100 

words  or  a  fraction  thereof 10 

For  translation,  for  every  100  words  or  fraction  thereof   .  .        .50 
The  Official  Gazette: 

Annual    subscriptions    .$5 .  00 

For  postage  upon  foreign  subscriptions,  except  those 
from  Canada  and  Mexico,  $5  or  more  as  required. 
Moneys  received  from  foreign  subscribers  in  ex- 
cess of  the  subscription  price  of  $5  will  be  depos- 
ited to  the  credit  of  the  subscriber  and  applied  to 
postage  upon  the  subscription  as  incurred.  All 
communications  respecting  the  Gazette  and  all  sub- 
scriptions should  be  addressed  to  the  Superintend- 
ent of  Documents.  Government  Printing  Office. 

Single    numbers    10 

Decision  leaflets    05 

Trade-mark    supplements    05 

For  bound  volumes  of  the  Official  Gazette: 

Semi-annual  volumes,   from  Jan.  1,   1872,   to   June  30, 

1883,  full  sheep  binding,  per  volume 4 .  00 

In  half  sheep  binding,  per  volume 3 .  50 

Quarterly  volumes,  from  July  1,  1883,  to  Dec.  31.  1902, 

full  sheep  binding,  per  volume   2 .  75 

Bi-monthly  volumes,  from  Jan.  1,  1903,  to  Mar.  1,  1906, 

full  sheep  binding,  per  volume   2. 50 

Bi-monthly  volumes,  from  Mar.  1.  ia06,  to  Jan.  1,  1909, 

tan  duck  binding   2 .  50 

Monthly  volumes,  from  Jan  1.  1909.  tan  duck  binding, 

per  volume  2 .  50 

>fonthly    volumes,    unbound,    with    title    page,    digest,    and 

index,  per  volume 50 

For  the  annual  index,  from  Jan..  1872,  to  Jan.  1,  1906,  full 

law  binding,  per  volume   2 .  00 

In  paper  covers,  per  volume 1.00 

For  the  annual  index  from  Jan.  1,  1906,  buckram  binding  .      2.00 
In  paper  covers,  per  volume  1 .  00 

236 


For  the  ficnoral   index — n   list   of  inventions  jiatented   from 

1790  to  1873 — tiiree  volumes,  full  law  binding,  per  set  10.00 
Tor  the  index  from  1790  to  1836 — one  volume,  full  law  bind- 
ing        5.00 

For  the  lilirarv  edition,  monthly  volumes  to  Jan.  1,  1906, 
containing  the  spoi'ifications  and  photolithographed  copies 
of  the  drawings  of  all  patents  issued  during  the  month, 

certified,  bound  in  full  sheep,  per  volume   5.00 

In  half  sheet,  to  Jan.  1,  190G,  per  volume   3.00 

For  the  library  edition,  monthly  volumes  from  Jan.  1,  1906, 

to  June  30,  1912,  tan  duck  binding   5. 00 

For  the  index  to  patents  relating  to  electricity,  granted  by 
the  United  States  prior  to  June  30,  1882,  one  volume,  250 

pages,  bound    5 .  00 

ill   paper  covers    3 .  00 

Annual  appendixes  for  each  fiscal  year  subsequent  to  June 

30,  1882,  paper  covers  1.50 

For  Commissioner's  decisions: 

For  1869,  1870,  and  1871,  one  volume,  full  law  binding.      2.00 
For  1872,  1873,  and  1874,  one  volume,  full  law  binding.      2.00 
For   1S75  and  1876,  one  volume,  with   decisions  of   United 

States  courts  in  patent  eases,  full  law  binding   2.00 

In  paper  covers 1.00 

Annual  volumes  with  decisions  of  United  States  courts,  for 

1877  to  1906,  full  law  binding,  per  volume   2.00 

In  paper  covers    1 .  00 

Subsequent  annual  volumes,  buckram  binding   2.00 

In  paper  covers   1 .  00 

192.  An  order  for  a  copy  of  an  assignment  must  give 
the  liber  and  page  of  the  record,  as  well  as  the  name  of 
the  inventor ;  otherwise  an  extra  charge  will  be  made 
for  the  time  consumed  in  making  any  search  for  such  as- 
signment. 

193.  Persons  will  not  be  allowed  to  make  copies  or 
tracings  from  the  files  or  records  of  the  office.  Such 
copies  will  be  furnished,  when  ordered,  at  the  rates  al- 
ready specified. 

194.  All  payments  of  money  required  for  office  fees 
must  be  made  in  specie,  Treasury  notes,  national-bank 
notes,  certificates  of  deposit,  post-office  money  orders,  or 
certified  checks.     Mone}-  orders  and  checks  should  be 

237 


made  payable  to  the  ' '  Commissioner  of  Patents. ' '  Pay- 
ment may  also  be  made  to  the  Treasurer,  or  to  any  of  the 
assistant  treasurers  of  the  United  States,  or  to  any  of  the 
depositaries,  national  banks,  or  receivers  of  public 
money,  designated  by  the  Secretary  of  the  Treasury  for 
that  purpose,  who  will  issue  a  certifieate  of  deposit  in 
triplicate  and  will  forward  the  original  and  the  duplicate 
certificates  to  the  Secretar^^  of  the  Treasury  and  the  Com- 
missioner of  Patents,  respectively,  and  will  give  the  trip- 
licate certificate  to  the  depositor.  Money  sent  by  mail  to 
the  Patent  Office  will  be  at  the  risk  of  the  sender.  Let- 
ters containing  money  should  be  registered.  In  no  case 
should  money  be  sent  with  models. 

REPAYMENT  OF  MONEY. 

195.  Money  paid  by  actual  mistake,  such  as  a  payment 
in  excess,  or  when  not  required  by  law,  or  by  neglect  or 
misinformation  on  the  part  of  the  office,  will  be  refund- 
ed; but  a  mere  change  of  purpose  after  the  payment  of 
money,  as  when  a  party  desires  to  withdraw  his  applica- 
tion for  a  patent  or  for  the  registration  of  a  trade-mark, 
or  to  withdraw  an  appeal,  will  not  entitle  a  party  to  de- 
mand such  a  return. 

PUBLICATIONS. 

196.  The  Official  Gazette,  a  weekly  publication  which 
has  been  issued  since  1872,  takes  the  place  of  the  old 
Patent  Office  Report.  It  contains  claims  of  all  patents 
issued,  including  reissues  and  designs,  with  portions  of 
the  drawings  selected  to  illustrate  the  inventions  claimed, 
illustrations  of  trade-marks  published,  and  lists  of  trade- 
marks, prints,  and  labels  registered.  It  also  contains  de- 
cisions rendered  by  the  courts  in  patent  cases  and  by  the 
Commissioner  of  Patents,  and  other  special  matters  of 
interest  to  inventors. 

The  Gazette  is  furnished  to  subscribers  at  the  rate  of 
$5  per  annum.    When  sent  abroad,  an  additional  charge 

238 


is  made  for  the  pa^inent  of  postage.  Single  copies  are 
furnished  for  ten  cents.  All  orders  and  remittances  for 
the  Gazette  should  be  sent  to  the  Superintendent  of  Doc- 
uments, Government  Printing  Office,  Washington,  D.  C. 
The  Gazette  is  issued  in  monthly  volumes,  with  a  title 
page  and  index  to  each  volume.  An  index  is  published 
annually,  which  is  sent  to  all  subscribers  without  addi- 
tional cost. 

On  June  30,  1912,  the  publication  of  the  monthly  li- 
brary edition,  issued  since  1872,  containing  the  full  spec- 
ifications and  drawings  of  all  i^atents  granted  during  the 
previous  month,  was  suspended. 

LIBRARY  REGULATIONS. 

197.  OiBcers  of  the  bureau  and  members  of  the  exam- 
ining corps  only  are  allowed  to  enter  the  alcoves  or  take 
books  from  the  scientific  library. 

Books  taken  from  this  library  must  be  entered  in  a 
register  kept  for  the  purpose,  and  returned  on  the  call 
of  the  librarian.  They  must  not  be  taken  from  the  build- 
ing except  by  permission  of  the  Commissioner. 

An}'  book  lost  or  defaced  must  be  replaced  by  a  new 
copy. 

Patentees  and  others  doing  business  with  the  office  can 
examine  the  books  only  in  the  library  hall. 

Translations  will  be  made  only  for  official  use. 

Copies  or  tracings  from  works  in  the  library  will  be 
furnished  by  the  office  at  the  usual  rates. 

AMENDMENTS  OF  THE  RULES. 

198.  All  amendments  of  the  foregoing  rules  will  be 
published  in  the  Official  Gazette. 

QUESTIONS  NOT  SPECIFICALLY  PROVIDED  FOR. 

199.  All  cases  not  specifically  defined  and  provided  for 
in  these  rules  will  be  decided  in  accordance  with  the 
merits  of  each  case  under  the  authority  of  the  Commis- 

239 


siouer,  and  such  decision  will  be  communicated  to  the 
interested  parties  in  writing. 

200.  Questions  arising  in  applications  filed  prior  to 
January  1,  1898,  where  these  rules  do  not  apply,  shall  be 
governed  by  the  rules  of  June  18,  1897. 

Thomas  Ewing, 
Commissioner  of  Patents. 


Department  of  the  Interior, 

December  22,  1915. 

Approved  to  take  effect  January  1,  1916. 

Bo  SW'EENEY, 

Assistant  Secretary. 


240 


APPENDIX  OF  FORMS. 


PETITIONS. 
1.  By  a  Sole  Inventor. 

To  the  Conimissioner  of  Patents: 

Your  petitioner, ,  a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  county  of 

and  State  of (or  subject,  etc.),  whose  post  office 

address   is    ,   prays   that   letters   patent   may   be 

granted  to  him  for  the  improvement  in ,  set  forth 

in  the  annexed  specification. 

Signed  at ,  in  the  county  of and  State 

of ,  this  ....  day  of ,  19 .  . 


2.  By  Joint  Inventors. 

To  the  Co)}imissio)ier  of  Patents: 

Your  petitioners,    and    , 

citizens  of  the  United  States  and  residents,  respectively, 

of ,  in  the  county  of and  State  of , 

and  of   ,  in  the  county  of   and  State  of 

(or  subjects,  etc.),  whose  post  otfice  addresses 

are,  respectively,   and   ,  pray  that  letters 

patent  may  be  granted  to  them,  as  joint  inventors,  for 

the  improvement  in    •.,  set  forth  in  the  annexed 

specification. 

Signed  at ,  in  the  county  of and  State 

of ,  this  ....  day  of ,  19 .  . 


241 


3.  By  An  Inventor,  for  Himself  and  Assignee. 

To  the  Commissioner  of  Patents: 

Your  petitioner, ,  a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  county  of 

and  State  of (or  subject,  etc.),  whose  post  office 

address   is    ,   prays   that   letters   patent   may   be 

granted  to  himself  and   ,  a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  county  of 

and  State  of ,  whose  post  office  address  is , 

as  his  assignee,  for  the  improvement  in ,  set  forth 

in  the  annexed  specification. 

Signed  at ,  in  the  coiuity  of and  State 

of ,  this  ....  day  of ,  19 .  . 


4.  Petition  With  Power  of  Attorney. 
To  the  Comniissioner  of  Patents: 

Your  petitioner, ,  a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  county  of 

and  State  of (or  subject,  etc.),  whose  post  office 

address   is    ,   prays  that   letters   patent   may   be 

granted  to  him  for  tlie  improvement  in ,  set  forth 

in  the  annexed  specification ;    and  he  hereby  appoints 

,  of   ,  State  of   ,  his  attorney,  with 

full  power  of  substitution  and  revocation,  to  prosecute 
this  application,  to  make  alterations  and  amendments 
therein,  to  receive  the  patent,  and  to  transact  all  busi- 
ness in  the  Patent  Office  connected  therewith. 

Signed  at ,  in  the  county  of and  State 

of ,  this  ....  day  of ,  19 .  . 


5.  By  An  Administrator. 

7V^  the  Comnilssloner  of  Pate)its: 

Your  petitioner, ,  a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  eount.y  of 

and  State  of (or  subject,  etc.),  whose  post  office 

242 


address  is administrator  of  the  estate  of , 

late  a  citizen  of ,  deceased  (as  by  reference  to  the 

duly  certified  copy  of  letters  of  administration,  hereto 
annexed,  will  more  fully  appear),  prays  that  letters  pat- 
ent may  be  granted  to  him  for  the  invention  of  the  said 
(improvement, in  ),  set  forth  in  the  an- 
nexed specification. 

Signed  at ,  in  the  county  of and  State 

of ,  this  ....  day  of ,  19 .  . 


Administrator,  etc. 


6.  By  An  Executor. 

To  the  Commissioner  of  Patents: 

Your  petitioner, ,  a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  county  of 

and  State  of (or  subject,  etc.),  whose  post  office 

address  is ,  executor  of  the  last  will  and  testament 

of ,  late  a  citizen  of ,  deceased  ( as  by  ref- 
erence to  the  duly  certified  copy  of  letters  testamentary, 
hereto  annexed,  will  more  fully  appear),  prays  that  let- 
ters patent  may  be  granted  to  him  for  the  invention  of 

the  said (improvement  in   ),  set  forth  in 

the  annexed  specification. 

Signed  at ,  in  the  county  of and  State 

of this  ....  dav  of 19 .  . 


Executor,  etc. 

7.  By  a  Guardian  of  An  Insane  Person. 

To  the  Connnissioner  of  Patents: 

Your  petitioner, ,  a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  count}^  of 

and  State  of (or  subject,  etc.),  whose  post  office 

address  is ,  and  who  has  been  appointed  guard- 
ian (or  conservator  or  representative)  of (as  by 

reference  to  the  duly  certified  copy  of  the  order  of  court, 

243 


hereto  annexed,  will  more  fully  appear),  prays  that  let- 
ters patent  may  be  granted  to  him  for  the  invention  of 

the  said (improvement  in  ),  set  forth  in 

the  annexed  specification. 

Signed  at ,  in  the  county  of and  State 

of ,  this  ....  day  of ,  19 .  . 

J 

Guardian,  etc. 

8.  For  a  Reissue  (By  the  Inventor) . 

To  the  Commissioner  of  Patents: 

Your  petitioner, ,  a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  county  of 

and  State  of (or  subject,  etc.),  whose  post  office 

address  is  ,  prays  that  he  may  be  allowed  to 

surrender  the  letters  patent  for  an  improvement  in , 

granted  to  him    ,  19..,  whereof  he  is  now  sole 

owner   (or  whereof    ,  on  whose  behalf  and  with 

whose  assent  this  application  is  made,  is  now  sole  owner, 
by  assignment),  and  that  letters  patent  may  be  reissued 

to  him  (or  the  said )  for  the  same  invention  upon 

the  annexed  amended  specification.  With  this  petition 
is  filed  an  abstract  of  title,  duly  certified,  as  required  in 
such  cases. 

Signed  at ,  in  the  county  of and  State 

of ,  this  ....  day  of ,  19 .  . 


[Assent  of  assignee  to  reissue.] 

The  undersigned,  assignee  of  the  entire  (or  of  an  undi- 
vided) interest  in  tlie  above-mentioned  letters  patent, 
hereby  assents  to  the  accompanying  application. 


244 


9.  For  a  Reissue  (By  the  Assignee). 

I  To  !)('  iis(>(l  only  wlicii  llic  imt'iiior  is  dead.] 

To  the  Com niissioHcr  of  /'dicvls: 

Your  petitioner, ,  a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  county  of 

and  State  of (or  subject,  etc.),  whose  post  office 

address  is ,  pra.ys  that  he  may  be  allowed  to  sur- 
render the  letters  patent  for  an  improvement  in , 

No ,  g-ranted ,  1 9 .  . ,  to ,  now  de- 
ceased, whereof  he  is  now  owner,  by  assignment  of  the  en- 
tire interest,  and  that  the  letters  patent  may  be  reissued 
to  him  for  the  same  invention,  upon  the  annexed  amend- 
ed specification.  With  this  petition  is  filed  an  abstract 
of  title  (or  an  order  for  making  and  filing  the  same, 
etc.). 

Signed  at ,  in  the  county  of and  State 

of ,  this  ....  day  of ,  19 .  . 


10.  For  Letters  Patent  for  a  Design. 

To  the  Coniniissioner  of  Patents: 

Your  petitioner, ,  a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  county  of 

and  State  of (or  subject,  etc.),  whose  post  office 

address   is    ,   praj^s  that   letters   patent   may   be 

granted  to  him  for  the  term  of  three  and  one-half  years 
(or  seven  years  or  fourteen  years)  for  the  new  and  orig- 
inal design  for ,  set  forth  in  the  annexed  specifica- 
tion. 

Signed  at ,  in  the  county  of and  State 

of ,  this  ....  day  of ,  19 .  . 


11.  For  a  Caveat. 

This  form  is  obsolete ;  law  relating  to  caveats  repealed 
by  the  Act  of  July  1,  1910. 

245 


12.  For  the  Renewal  of  a  Forfeited  Application. 
To  the  Coniniissioitrr  of  Paffnts: 

Your  petitioner, a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  count}-  of 

and  State  of (or  subject,  etc.),  whose  post  office 

address  is   ,  represents  that  on   ,  19 .  . ,  he 

filed  an  application  for  letters  patent  for  an  improve- 
ment in ,  serial  number ,  which  application 

was  allowed ,  19  •  • ,  but  that  he  failed  to  make  pay- 
ment of  the  final  fee  within  the  time  allowed  b}'  law. 
He  now  makes  renewed  application  for  letters  patent  for 
said  invention,  and  prays  that  the  original  specification, 
oath,  drawings,  and  model  may  be  used  as  a  part  of  this 
application. 

Signed  at  ,  in  the  county  of and  State 

of ,  this  ....  day  of ,  19 .  . 


SPECIFICATIONS. 
13.  For  an  Art  or  Process. 

To  all  whom  it  may  concern: 

Be  it  kno^vn  that  I,    ,  a  citizen  of  the 

United  States,  residing  at ,  in  the  county  of 

and  State  of (or  subject,  etc.),  have  invented  new 

and  useful  improvements  in  processes  of  extracting  gold 
from  its  ores,  of  which  the  following  is  a  specification : 

This  invention  relates  to  the  process  of  extracting  gold 
from  its  ores  by  means  of  a  solution  of  cyanide  of  an 
alkali  or  alkaline  earth,  and  has  for  its  object  to  render 
the  process  more  expeditious  and  considerably  cheaper. 

In  extracting  gold  from  its  ores  by  means  of  a  solution 
of  cyanide  of  potassium,  sodium,  barium,  etc.,  the  simul- 
taneous oxidation  of  the  gold  is  necessary,  and  this  has 
hitherto  been  effected  by  the  action  of  the  air.  upon  the 
gokl  which  is  rendered  oxidizable  thereby  by  the  action 
f)f  tlu'  cyanide  solution. 

246 


Iiislciul  of  (l('i)('n(liii<i'  solely  upon  llic  a<:'(MK-y  of  the  a'w 
for  the  <)xi(liziii<>'  aetion  I  eiiii)loy,  to  assist  the  oxitUitioii 
of  the  p'okl,  I'errieyauide  of  i)otassiuin  or  another  feri-i- 
(•yaiio<>'eii  salt  of  an  alkali  or  of  an  eartli  alkali  in  an 
alkaline  solution,  liy  this  means  the  oxidation,  heiiiii' 
rendered  very  mueh  nior(>  enero'etic,  is  effected  with  a 
considerably  smaller  (jnantity  of  the  solvent.  Thus,  by 
the  addition  of  ferricyanide  of  |)()ta,ssium  or  other  fer-ri- 
cyanides  to  the  cyanide  of  potassium  solution,  as  much 
as  eighty  per  cent,  of  potassium  cyanide  may  be  saved. 

It  may  be  remarked  that  the  ferricyanide  of  potassium 
alone  M'ill  not  dissolve  the  gold  and  does  not  therefore 
come  under  the  category  of  a  solvent  hitherto  emploj-ed 
in  processes  of  extraction.  It  does  not  therefore  render 
unnecessary  the  emplo.yment  of  the  simple  cyanide  as  a 
solvent,  but  only  reduces  the  amount  re(|uired  owing  to 
the  capacity  of  the  ferricyanide  to  assist  the  air  to  rap- 
idly oxidize  the  gold  in  the  presence  of  the  simple  salt. 
Consequently  the  cyanogen  of  the  latter  is  not  used  to 
form  the  gold  cyanide  compound. 

I  claim : 

The  process  of  extracting  gold  from  its  ores  consisting 
in  subjecting  the  ores  to  the  dissolving  aetion  of  cyanide 
of  potassium  in  the  presence  of  ferricyanide  of  potas- 
sium, substantially  as  herein  described. 


14.  For  a  Machine. 

To  all  wJiom  it  may  concern: 

Be  it  known  that  I,   ,  a  citizen  of  the 

United  States,  residing  at ,  in  the  county  of 

and  State  of (or  subject,  etc.),  have  invented  a 

new  and  useful  meat-chopping  machine,  of  which  the  fol- 
lowing is  a  specification : 

My  Invention  relates  to  improvements  in  meat-chop- 
ping machines  in  which  vertically  reciprocating  knives 
operate  in  conjunction  with  a  rotating  chopping  block; 

247 


and  the  objects  o£  my  improvement  are,  first,  to  provide 
a  continuously  lubricated  bearing  for  the  block;  second, 
to  afford  facilities  for  the  proper  adjustment  of  the 
knives  independently  of  each  other  in  respect  to  the  face 
of  the  block;  and,  third,  to  reduce  the  friction  of  the 
reciprocating-  rod  which  carries  the  knives. 

I  attain  these  objects  by  the  mechanism  illustrated  in 
the  accompanying  drawing,  in  which — 

Figure  1  is  a  vertical  section  of  the  entire  machine; 
Fig.  2,  a  plan  view  of  the  machine  as  it  appears  after  the 
removal  of  the  chopping  block  and  knives;  Fig.  3,  a  ver- 
tical section  of  a  part  of  the  machine  on  the  line  3  3,  Fig. 
2;  and  Fig.  4,  a  detailed  view  in  perspective  of  the  re- 
ciprocating crosshead  and  its  knives. 

Similar  numerals  refer  to  similar  parts  throughout  the 
several  views. 

The  table  or  plate  1,  its  legs  or  standards  2  2,  and  the 
hanger  3,  secured  to  the  underside  of  the  table,  consti- 
tute the  framework  of  the  machine.  In  the  hanger  3 
turns  the  shaft  4,  carrying  a  fly-wheel  5,  to  the  hub  of 
which  is  attached  a  crank  6,  and  a  crank-pin  7,  connected 
by  a  link  8,  to  a  pin  passing  through  a  crosshead  9,  and  to 
the  latter  is  secured  a  rod  10,  having  at  its  upper  end  a 
crosshead  11,  carrying  the  adjustable  chopping  knives, 
12  12,  referred  to  hereinafter. 

The  crosshead  9,  reciprocated  by  the  shaft  4,  is  pro- 
vided with  anti-friction  rollers  13  13,  adapted  to  guides 
14  14,  secured  to  the  underside  of  the  table  1,  so  that  the 
reciprocation  of  this  crosshead  may  be  accompanied  with 
as  little  friction  as  possible. 

To  the  underside  of  a  wooden  chopping  block  15  is  se- 
cured an  annular  rib  16,  adapted  to  and  bearing  in  an 
iiiiiiiilar  groove  17  in  the  table  1.  (See  Figs.  1  and  2.) 
This  annular  groove  or  channel  is  not  of  the  same  deptl 
throughout,  but  connnunicates  at  one  or  more  points 
(two  in  the  present  instance)  with  pockets  or  receptacles 
]H,  18  wider  tluin  the  groove  and  containing  supplies  of 

248 


THIS  SPACE  MUST  BE  EIGHT  INCHES" 


^doTTxcy: 


249 


oil,  in  eoiitaet  with  which  the  rib  16  rotates,  so  that  th( 
continuous  lubrication  of  the  groove  and  rib  is  assured. 
The  rod  10  passes  through  and  is  guided  by  a  central 
stand  10,  secured  to  the  ta])le  1,  and  projecting  through 
a  central  opening  in  the  chopping  block  without  being  in 
contact  therewith,  the  upper  portion  of  the  said  stand 
being  contained  within  a  cover  20,  which  is  secured  to 
the  block,  and  which  prevents  particles  of  meat  from  es- 
caping through  the  central  opening  of  the  same. 

The  crosshead  11,  previously  referred  to,  and  shown  in 
perspective  in  Fig.  4,  is  vertically  adjustable  on  the  rod 
10,  and  can  be  retained  after  adjustment  by  a  set-screw 
21,  the  upper  end  of  the  rod  being  threaded  for  the  re- 
ception of  nuts  22.  which  resist  the  shocks  imparted  to 
the  crosshead  when  the  knives  are  brought  into  ^^olent 
contact  with  the  meat  or  the  chopping  block. 

The  knives  12,  12  are  adjustable  independently  of 
each  other  and  of  the  said  crosshead,  so  that  the  coinci- 
dence of  the  cutting-edge  of  each  knife  with  the  face  of 
the  chopping-block  may  always  be  assured. 

I  prefer  to  carry  out  this  feature  of  my  invention  in 
the  manner  shown  in  Fig.  4,  where  it  will  be  seen  that  two 
screw-rods  23,  23  rise  vertically  from  the  back  of  each 
knife  and  pass  through  lugs  24,  24  on  the  cross-head,  each 
rod  being  furnished  with  two  nuts,  one  above  and  the 
other  below  the  lug  through  which  it  passes.  The  most 
accurate  adjustment  of  the  knives  can  be  effected  by  the 
manipulation  of  these  nuts. 

A  circular  casing  25  is  secured  to  the  choppiug-block, 
so  as  to  form  on  the  same  a  trough  26  for  keeping  the 
meat  within  proper  bounds;  and  on  the  edge  of  the 
annular  rib  16,  secured  to  the  bottom  of  the  block,  are 
teeth  27,  for  receiving  those  of  a  pinion  28,  which  may 
])e  driven  Ijy  tlie  shaft  4  through  the  medium  of  any  suit- 
able system  of  gearing,  that  shown  in  the  drawing  form- 
ing no  part  of  my  present  invention. 

This  shaft  4  ma\"  be  driven  by  a  belt  passing  round  the 
2r)0 


l)ulleys  2!),  oi-  it  may  l)e  driven  by  hand  from  a  shaft  30, 
furnished  at  one  end  witli  a  handle  31,  and  at  the  other 
with  a  cog-wheel  32,  gearing  into  a  pinion  on  the  said 
shaft  4. 

A  phitform  33  may  be  hinged,  as  at  34,  to  one  edge  of 
the  table  1,  to  support  a  vessel  in  which  the  chopped  meat 
can  be  deposited.  The  means  by  which  it  may  be  sup- 
ported are  shown  in  full  lines,  and  the  most  convenient 
method  of  disposing  of  it  when  not  in  use  is  shown  in 
dotted  lines,  in  Fig.  1. 

I  am  aware  that  prior  to  my  invention  meat-chopping 
machines  have  been  made  with  vertically-reciprocating 
knives  operating  in  conjunction  with  rotating  chopping- 
blocks.  I  therefore  do  not  claim  such  a  combination 
broadly ;   but 

I  claim : 

1.  The  combination,  in  a  meat-chopping  machine,  of  a 
rotary  chopping-block  having  an  annular  rib,  with  a 
table  having  an  annular  recess  to  receive  said  rib,  and 
a  pocket  communicating  with  the  said  recess,  all  substan- 
tially as  set  forth. 

2.  In  a  meat-chopping  machine,  the  combination  of  a 
rotary  chopping-block  with  a  reciprocating  cross-head 
carrying  knives,  each  of  which  is  vertically  adjustable  on 
the  said  cross-head  independently  of  the  other,  substan- 
tially as  described. 

8.  A  chopping  knife  having  two  screw  rods  projecting 
perpendicularly  from  its  back  and  parallel  with  the  sides 
of  the  knife. 

4.  A  meat  chopping  machine  provided  with  a  rod  car- 
rying chopping  knives  and  adapted  to  be  reciprocated, 
a  cross-head  secured  to  said  rod,  anti-friction  rollers 
mounted  on  the  cross-head,  and  guides  with  which  the 
rollers  cooperate,  substantialh^  as  described. 


—  251 


15.  For  a  Composition  of  Matter. 

To  all  ivhoin  it  inaij  concern: 

Be  it  known  that  I, ,  a  citizen  of 

I  Full  name  of  appHtant.] 

,  residing  at ,  in  tlie  county  of 

and  State  of   (or  subject  of, 

etc.),  have  invented  a  new  and  useful  Non-Conducting 
Plastic  Composition,  of  which  the  following  is  a  specifica- 
tion. 

The  object  of  my  invention  is  the  production  of  a  plas- 
tic non-conducting  composition  or  cement  to  be  applied 
to  the  surfaces  of  steam-boilers  and  steam-pipes  and 
other  receptacles  and  conduits  as  a  lagging  for  prevent- 
ing radiation  of  heat  and  the  permeation  of  water,  and 
rendering  them  fireproof. 

My  composition  consists  of  a  mixture  of  paper-pulp 
or  other  vegetable  fibrous  material,  a  powdered  mineral 
filler,  such  as  soapstone  or  Portland  cement,  a  mineral 
fibrous  material,  such  as  asbestos,  and  a  mineral  cement- 
ing material,  such  as  silicate  of  sodium  or  jDotassium 
(soluble  glass). 

In  preparing  the  composition  I  prefer  to  use  the  in- 
gredients in  about  the  following  proportions,  viz.  fifty 
pounds  of  paper-pulp,  fifty  pounds  of  soapstone,  twenty- 
five  pounds  of  asbestos,  and  three  quarts  of  a  33°  Baume 
solution  of  soluble  glass.  Good  results  may  be  obtained, 
however,  when  the  ingredients  are  varied  within  the  fol- 
lowing limits :  vegetable  fibrous  material,  forty  to  sixty 
pounds;  powdered  mineral  filler,  forty -five  to  fifty-five 
pounds;  mineral  fibrous  material,  twenty  to  thirty 
pounds;  soluble  glass,  two  to  four  (piarts  of  a  30°  Baume 
to  30°  Baume  solution. 

The  asbestos  may  in  some  cases  be  omitted  when  a 
cheaper  product  is  desired,  though  the  composition  is  not 
then  so  efficient  for  the  lagging  of  surfaces  subjected  to 
high  temperatures. 

'i'hcsc  ingredients  are  mixed  with  a  (|UJintity  of  watei 
252 


sufficient  to  form  a  paste  or  mortar  of  such  consistency 
as  to  enable  it  to  be  plastered  over  the  surface  to  be  pro- 
tected. It  may  be  applied  in  one  or  more  coats  or  layers, 
in  the  ordinary  manner,  according  to  the  nature  of  the 
article  and  the  amount  of  protection  required. 

My  composition  is  light,  is  fireproof,  is  a  very  efficient 
non-conductor  of  heat,  is  impervious  to  water,  adheres 
without  cracking  when  it  dries  to  the  surface  to  which  it 
is  applied,  and,  as  a  whole,  possesses  in  a  high  degree  all 
the  desired  properties  of  a  lagging  for  steam  heated 
surfaces. 

I  claim : 

1.  A  plastic  composition  adapted  to  form  a  light 
weight,  fireproof,  and  waterproof  lagging  for  steam 
heated  surfaces,  comprising  a  vegetable  fibrous  material, 
a  mineral  filler  in  powdered  form  and  a  mineral  cement- 
ing substance. 

2.  A  plastic  composition  adapted  to  form  a  lagging 
for  steam  pipes  and  the  like  comprising  forty  to  sixty 
pounds  of  paper-pulp,  forty-five  to  fifty-five  pounds  of 
powdered  soapstone,  and  two  to  four  quarts  of  a  30° 
Baume  to  35°  Baume  solution  of  soluble  glass. 

3.  A  plastic  composition  consisting  of  a  vegetable  fi- 
brous material,  a  powdered  mineral  filler,  a  mineral 
fibrous  material  and  a  mineral  cementing  substance  sub- 
stantially as  described. 

4.  A  plastic  composition  consisting  of  fifty  pounds  of 
paper  pulp,  fifty  pounds  of  powdered  soapstone,  twenty- 
five  pounds  of  asbestos  fiber  and  three  quarts  of  a  33° 
Baume  solution  of  soluble  glass. 

16.  For  a  Design. 

To  all  ivhoni  it  may  concern: 

Be  it  known  that  I, ,  a  citizen  of  the  United 

States,  residing  at ,  in  the  county  of , 

and  State  of (or  subject,  etc.),  have  invented 

a   new,   original,   and   ornamental   Design   for   Watch- 

253 


Cases,  of  which  the  following  is  a  specification,  reference 
being  had  to  the  accompanying  drawing,  forming  part 
thereof. 

The  figure  is  a  plan  view  of  a  watch  case,  showing  my 
new  design. 

I  claim: 

The  ornamental  design  for  a  watch  case,  as  shown. 


17.  For  a  Caveat. 

This  form  is  obsolete ;  law  relating  to  caveats  repealed 
by  Act  of  July  1,  1910. 

OATHS. 

18.  Oath  to  Accompany  an  Application  for  United  States 

Patent. 


ss: 


,^  the  above-named  petitioner .  . ,  being 

sworn  (or  aifirmed),  depose.  .  and  say.  .  that 

citizen .  .  of  ^ and  resident .  .  of  ^ , 

that verily  believe to  be  the  orig- 
inal, first,  and*   inventor .  .   of  the  improvement 

in^  described  and  claimed  in  the  annexed  spec- 
ification ;  that do .  .  not  know  and  do .  .  not  be- 
lieve that  the  same  was  ever  known  or  used  before 

invention  or  discovery  thereof,  or  patented  or  described 

in  any  printed  publication  in  any  country  before 

invention  or  discovery  thereof,  or  more  than  two  years 

ilf  the  invi'iUor  be  dead,  the  oath  will  be  made  by  the  administrator; 
if  insane,  by  the  guardian,  conservator,  or  legal  representative.  In 
cither  ease  the  afliant  will  declare  his  belief  that  the  party  named  as 
Inventor  was  the  original  and  first  inventor. 

2If  the  applicant  be  an  alien,  state  of  what  foreign  country  he  is  a 
citizen  or  subject. 

:!Givo  residence  address  in  full;    as  "a  resident  of    in  the 

county   of    and   State  of    "    or  "of  No 

Street,  in  the  city  of  county  of ,  and  State  (King- 
dom, Republic,  or  Empire)  of " 

4"Solc"  or  "joint." 

cinsert  title  of  invention. 

254 


I 


w 


Jtcr 


K^^tor-rt 


^J/-        I 


^  ^'^'^  space  must  be  e(^/it,  i/cc/c&s. 


255 


prior  to  this  application,  or  in  public  use  or  on  sale  in 
the  United  States  for  more  than  two  years  prior  to  this 
application ;  that  said  invention  has  not  been  patented  in 
any  country  foreign  to  the  United  States  on  an  applica- 
tion filed  by or legal  representatives  or  as- 
signs more  than  twelve  months  prior  to  this  application ; 
and  that  no  application  for  patent  on  said  improvement 
has  been  filed  by or representatives  or  as- 
signs in  any  country  foreign  to  the  United  States,  ex- 
cept as  follows  r*' 


Inventor's  full  name 


{ 


Sworn  to  and  subscribed  before  me  this day  of 

,19.. 

[seal.]  

[Signature  of  justice  or  notary.] 
8 

[Official  character.] 

19.  Oath  to  Accompany  an  Application  for  United  States 
Patent  for  Design. 

'-  ss: 

/  the  above-named  petitioner .  , ,  being 

sworn  (or  affirmed),  depose.  .  and  say.  .  that  

citizen .  .  of- and  resident .  .  of ^ , 

iJName  each  country  in  wliich  an  application  has  been  filed,  and  in 
each  case  give  date  of  filing  the  same.  If  no  application  has  been  filed, 
erase  the  words  "except  as  follows." 

7A11  oaths  must  bear  the  signature  of  the  affiant. 

8*  *  *  "When  the  person  before  whom  the  oath  or  affirmation  is 
made  is  not  provided  with  a  seal,  his  official  character  shall  be  estab- 
lished by  competent  evidence,  as  by  a  certificate  from  a  clerk  of  a  court 
of  record  or  other  proper  officer  having  a  seal." 

A  certificate  of  the  official  character  of  a  magistrate,  stating  date  of 
appointment  and  term  of  office,  may  be  filed  in  the  Patent  Office,  which 
will  obviate  the  necessity  of  separate  certificates  in  individual  cases. 

When  the  oath  is  taken  abroad  before  a  notary  i)ublic.  judge,  or  mag- 
istrate, his  authority  should  in  each  instance  be  proved  by  a  certificate 
of  a  diplomatic  or  consular  officer  of  the  I'nitod  States. 

ilf  the  inventor  be  dead,  the  oath  will  be  made  by  the  administrator; 
if  insane,  by  the  guardian,  conservator,  or  legal  representative.  In 
either  case  the  affiant  will  declare  his  belief  that  the  party  named  as 
inventor  was  the  original  and  first  inventor. 

2lf  the  ajiplicant  be  an  alien,  slate  of  what  foreign  country  he  is  a 
citizen  or  subject. 

sGive  residence  address  in  full:    as  "a  resident  of    ,  in  the 

256 


that verily  believe to  be  tiie  orig- 
inal, first,  and  * inventor  of  the  design  for  '' 

described  and  claimed  in  the  annexed  specifica- 
tion ;    that do .  .  not  know  and  do .  .  not  believe 

that  the  same  was  ever  known  or  used  before in- 
vention thereof,  of  patented  or  described  in  any  printed 
publication  in  any  country  before invention  there- 
of, or  more  than  two  years  prior  to  this  application,  or 
in  public  use  or  on  sale  in  the  United  States  for  more 
than  two  years  prior  to  this  application ;  that  said  de- 
sign has  not  been  patented  in  any  country  foreign  to  the 

United  States  on  an  application  filed  by or 

legal  representatives  or  assigns  more  than  four  months 
prior  to  this  application ;    and  that  no  application  for 

patent  on  said  design  has  been  filed  by or 

representatives  or  assigns  in  any  country  foreign  to  the 
United  States,  except  as  follows :'' 


Inventor 's  full  name 


Sworn  to  and  subscribed  before  me  this day  of 

,19.. 

[SEAIi.]  ^ 

[Signature  of  justice  or  notary.] 


[Offlpial   character.] 


county  of    ,   and   State  of    "    or   "of  No 

Street,  in  the  city  of county  of  and  State  (King- 
dom, Republic,  or  Empire)  of " 

4"Sole"  or  "joint." 

5Insert  title  of  invention. 

SName  each  country  in  which  an  application  has  been  filed,  and  in 
each  case  give  date  of  filing  the  same.  If  no  application  has  been  filed, 
erase  the  words  "except  as  follows." 

7A11  oaths  must  bear  the  signature  of  the  affiant. 

8*  *  *  -'When  the  person  before  whom  the  oath  or  affirmation  is 
made  is  not  provided  with  a  seal,  his  official  character  shall  be  estab- 
lished by  competent  evidence,  as  by  a  certificate  from  a  clerk  of  a  court 
of  record  or  other  proper  officer  having  a  seal." 

A  certificate  of  the  official  character  of  a  magistrate,  stating  date  of 
appointment  and  term  of  office,  may  be  filed  in  the  Patent  Office,  which 
will  obviate  the  necessity  of  separate  certificates  in  individual  cases. 

When  the  oath  is  taken  abroad  before  a  notary  public,  judge,  or  mag- 
istrate, his  authority  should  in  each  instance  be  proved  by  a  certificate 
of  a  diplomatic  or  consular  officer  of  the  United  States.    - 


19 


257 


20.  By  an  Applicant  for  a  Reissue  (Inventor). 

[When  the  original  patent  is  claimed  to  be  inoperative  or  invalid  "by- 
reason  of  the  patentee  claiming  as  his  own  invention  or  discovery  more 
than  he  had  a  right  to  claim  as  new,"  this  form  can  be  modilied  ac- 
cordingly.] 


SS. 


,  the  above-named  petitioner,  being  duly 

sworn  (or  affirmed),  deposes  and  says  that  he  does  verily 
believe  himself  to  be  the  original,  first,  and^  in- 
ventor of  the  improvement  set  forth  and  claimed  in  the 
foregoing  specification  and  for  which  improvement  he 
solicits  a  patent ;  that  deponent  does  not  know  and  does 
not  believe  that  said  improvement  was  ever  before  known 
or  used;   that  deponent  is  a  citizen  of  the  United  States 

of  America,   and  resides  at    ,   in  the  county  of 

and  State  of  ;-  that  deponent  verily  be- 
lieves that  the  letters  patent  referred  to  in  the  foregoing 
petition  and  specification  and  herewith  surrendered  are 
inoperative  (or  invalid),  for  the  reason  that  the  specifi- 
cation thereof  is  defective  ( or  insufficient ) ,  and  that  such 

defect  (or  insufficiency)  consists  particularly  in^ 

;    and  deponent  further  says  that  the  errors 

which  render  such  patent  so  inoperative  (or  invalid) 
arose  from  inadvertence  (or  accident,  or  mistake),  and 
without  any  fraudulent  or  deceptive  intention  on  the 
part  of  deponent  ;*  that  the  following  is  a  true  specifica- 
tion of  the  errors  which  it  is  claimed  constitute  such  in- 
advertence    (or    accident,    or    mistake)    relied    upon:^ 

;    that  such  errors  so  particularl}^ 

specified  arose  (or  occurred)  as  follows  :•'" 


Inventor's  full  name 


^i 


Subscribed  and  sworn  to  before  me  this day  of 

,  19.. 


[seal.  J 


[Signature  of  justice  or  notary.] 
[Official   character.] 


i"Sole"  or  "joint."  2UuIo  'Ki.  ;;UuIc  87.  4Rule  87  (5). 

258 


21.  By  an  Applicant  for  a  Reissue  (Assignee). 

[To  be  used  only  when  the  inventor  is  dead.] 


SS . 


,  the  above-named  petitioner,  bei]i<?  dnly 

sworn  (or  atBrmed),  deposes  and  says  that  he  verily  be- 
lieves that  the  aforesaid  letters  patent  granted  to 

are  (here  follows  Form  20,  the  necessary  changes 

being  made)  ;   that  the  entire  title  to  said  letters  patent 
is  vested  in  him ;    and  that  he  verily  believes  the  said 

to  be  the  first  and  original  inventor  of  the 

invention  set  forth  and  claimed  in  the  foregoing  amended 

specification ;    and  that  the  said   is  now 

deceased. 


Sworn  to  and  subscribed  before  me  this day  of 

,19.. 

[seal.]  

[Signature  of  justice  or  notary.] 


[Official   character.] 


22.  Supplemental  Oath  to  Accompany  a  Claim  for  Matter 
Disclosed  But  Not  Claimed  in  an  Original  Application. 


SS. 


,  whose  application  for  letters  patent 

for  an  improvement  in   ,  serial  No ,  was 

filed  in  the  United  States  Patent  Office  on  or  about  the 
day  of  ,  19.  .,  being  duly  sworn  (or  af- 
firmed), deposes  and  says  that  the  subject  matter  of  the 
foregoing  amendment  was  part  of  his  invention,  was  in- 
vented before  he  filed  his  original  application,  above 
identified,  for  such  invention,  was  not  known  or  used  be- 
fore his  invention,  was  not  patented  or  described  in  a 
printed  publication  in  any  country  more  than  two  years 
before  his  application,  was  not  patented  in  a  foreign 

259 


country  on  an  application  filed  by  himself  or  his  legal 
representatives  or  assigns  more  than  twelve  mouths  be- 
fore his  application,  was  not  in  public  use  or  on  sale  in 
this  country  for  more  than  two  years  before  the  date  of 
his  application,  and  has  not  been  abandoned. 


Sworn  to  and  subscribed  before  me  this day  of 

,19.. 

[seal.]  

[Signature  of  justice  or  notary.] 


[Official  character.] 

23.  Oath  as  to  the  Loss  of  Letters  Patent. 


ss. 


,  being  duly  sworn   (or  affirmed),  de- 
pose .  .    and  say .  .    that  the  letters  patent  No , 

granted  to  him,  and  bearing  date  on  the day  of 

,  19.  .,  have  been  either  lost  or  destroyed;    that 

he  has  made  diligent  search  for  the  said  letters  patent  in 
all  places  where  the  same  would  probably  be  found,  if 
existing,  and  that  he  has  not  been  abfe  to  find  them. 


Subscribed  and  sworn  to  before  me  this day  of 

.....-.,19.. 

[seal.]  

[Signature  of  justice  or  notary.] 


[Official  character.] 

24.  Oath  of  Adminsitartor  as  to  the  Loss  of  Letters  Patent. 


ss: 


,  being  duly  sworn,  depose .  .  and  say .  . 

that  he  is  administrator  of  the  estate  of , 

deceased,  late  of ,  in  said  county:   that  the  letters 

patent  No ,  granted  to  said ,  and 

260 


bearing  tlate  of  tlie day  of ,  1!).  .,  liavc  been 

lost  or  destroyed,  as  he  verily  believes;  that  he  has  made 
diligent  search  for  the  said  letters  patent  in  all  places 
where  the  same  would  probably  be  found,  if  existing,  and 
especially  among  the  papt^rs  of  the  decedent,  and  that  he 
has  not  been  able  to  find  said  letters  patent. 


Administrator,  etc. 

Subscribed  and  sworn  to  before  me  this day  of 

19.. 


[Signature  of  justice  or  notary.] 
[Official   character.] 


25.  Power  of  Attorney  After  Application  Filed. 

[If  the  power  of  attorney  be  given  at  any  time  other  than  that  of 
making  application  for  letters  patent,  it  will  be  in  substantially  the  fol- 
lowing form  :] 

To  the  Commissioner  of  Patents: 

The  undersigned  having,  on  or  about  the day 

of ,  19 — ,  made  application  for  letters  patent  for 

an  improvement  in   (serial  number   ), 

hereby  appoints ,^  of ,  in  the  county 

of and  State  of  ,  his  attorney,  with  full 

power  of  substitution  and  revocation,  to  prosecute  said 
application,  to  make  alterations  and  amendments  there- 
in, to  receive  the  patent,  and  to  transact  all  business  in 
the  Patent  Office  connected  therewith. 

Signed  at   ,  in  the  county  of  ,  State  of 

,  this day  of ,  19 .  . 

26.  Revocation  of  Power  of  Attorney. 

To  the  Commissioner  of  Patents: 

The  undersigned  having,  on  or  about  the day 

of ,  19 .  . ,  appointed ,  of ,  in 

the  count}'  of and  State  of ,  his  attorney  to 

ilf  the  power  of  attorney  be  to  a  firm,  the  name  of  each  member  of 
the  firm  must  be  given  in  full. 

2G1 


prosecute  an  application  for  letters  patent,  which  appli- 
cation was  filed  on  or  about  the   day  of , 

19.  .,  for  an  improvement  in (serial  number  .  . .), 

hereby  revokes  the  poM^er  of  attorney  then  given. 

Signed  at ,  in  the  count}'  of and  State 

of ,  this day  of ,  19 .  . 


27.  Amendment.^ 

To  the  Comynissio)icr  of  Patents: 

In  the  nuitter  of  my  application  for  letters  patent  for 

an  improvement  in ,  filed ,  19.  .    (serial 

number    ) ,  I  hereby   amend  my  specification  as 

follows : 

By  striking  out  all  between  the and lines, 

inclusive,  of  page  .  .  ; 

By  inserting  the  words  " , "  after  the 

word  " , "  in  the   .....   line  of  the claim ; 

and 

By  striking  out  the claim  and  substituting  there- 
for the  following : 

Signed  at ,  in  the  county  of ,  and  State 

of 


By ...., 

His  Attorney  in  Fact. 

DISCLAIMERS. 
28.  Disclaimer  After  Patent. 

To  the  Commissioner  of  Patents: 

Your  petitioner, ,  a  citizen  of  the  United 

States,  residing  at ,  in  the  county  of and 

State  of (or  subject,  etc.),  represents  that  in  the 

iln  tlu"  ijri'paratioii  of  all  animdnicnts  a  separate  paragraph  should 
be-  devoted  to  each  distinct  erasure  or  insertion,  in  order  to  aid  the  of- 
llee  in  making  tlie  entry  of  the  amendment  into  the  case  to  which  it 
pertains. 

262 


matter  of  a  certain  iiii])r()voinent  in ,  for  wliieli 

letters  ])atent  of  the  United  States  No were  granted 

to ,  on  the day  of ,  19 .  . ,  he  is 

(here  state  the  exact  interest  of  the  disclaimant ;  if  as- 
signee, set  out  liber  and  page  where  assignment  is  re- 
corded), and  that  he  has  reason  to  believe  that  through 
inadvertence  (accident  or  mistake)  the  specification  and 
claim  of  said  letters  patent  are  too  broad,  including  that 
of  which  said  patentee  was  not  the  first  inventor.  Your 
petitioner,  therefore,  hereby  enters  this  disclaimer  to  that 
part  of  the  claim  in  said  specification  which  is  in  the  fol- 
lowing words,  to  wit : 

Signed  at ,  in  the  county  of ,  and  State 

of ,  this day  of ,  19 .  . 


Witnesses 


29.  Disclaimer  During"  Interference. 

Interference. 

Before  the  examiner  of  interfer- 


vs. 

I       ences. 


Subject  matter : 

To  the  Commissioner  of  Patents: 

Sir:  In  the  matter  of  the  interference  above  noted, 
under  the  provisions  of  and  for  the  purpose  set  forth 
in  Rule  107,  I  disclaim  (set  forth  the  matter  as  given  in 
declaration  of  interference),  as  I  am  not  the  first  inven- 
tor thereof. 

Signed  at ,  in  the  county  of ,  and  State 

of ,  this dav  of ,  19 .  , 


Witnesses ; 


263 


APPEALS  AND  PETITIONS. 
30.  From  a  Principal  Examiner  to  the  Examiners  in  Chief. 

To  the  ConuvissioHcr  of  Vatcvts: 

Sir:  I  hereby  appeal  to  the  Examiners  in  Chief  from 
the  decision  of  the  Principal  Examiner  in  the  matter  of 
my  application  for  letters  patent  for  an  improvement  in 

,  filed ,  19 .  . ,  serial  number , 

which  on  the day  of   ,  19.  .,  was  rejected 

the  second  time.  The  following'  are  the  points  of  the  de- 
cision on  which  the  appeal  is  taken:  (Here  follows  a 
statement  of  the  points  on  which  the  appeal  is  taken.) 

Signed  at ,  in  the  county  of ,  and  State 

of  .......  this day  of ,  19 .  . 


31.  From  the  Examiner  in  Charge  of  Interferences  to  the 

Examiners  in  Chief. 

To  the  Commissioner  of  Patents: 

Sir  :  I  hereb}'  appeal  to  the  Examiners  in  Chief  from 
the  decision  of  the  Examiner  of  Interferences  in  the  mat- 
ter of  the  interference  between  my  applications  for  let- 
ters patent  for  improvement  in and  the  letters 

patent  of ,  in  which  priority  of  invention  was 

awarded  to  said The  following  are  assigned 

as  reasons  of  appeal:  (Here  should  follow  an  explicit 
statement  of  alleged  errors  in  the  decision  of  the  Exam- 
iner of  Interferences.) 

Signed  at ,  in  the  county  of ,  and  State 

of ,  this day  of ,  19 .  . 

32.  From  the  Examiners  in  Chief  to  the  Commissioner  in 

Ex  Parte  Cases. 
To  the  ('ommissio)i<r  of  Patents: 

Sir:  I  hereby  appeal  to  the  Commissioner  in  person 
from  the  decision  of  the  Examiners  in  Chief  in  the  mat- 
tei-  of  my  applicuition  for  letters  patent  for  an  improve 

264 


ineiit  ill   ,  filed   ,  19.  .,  serial  num- 
ber        The  f()ll()\viii<i'  are  assio-ned  as  reasons  of 

appeal:     (Here  follow  the  reason  as  in  Form  80.) 

Signed  at ,  in  the  county  of ,  and  State 

of ,  this day  of ,  19 .  . 


33.  From  the  Examiners  in  Chief  to  the  Commissioner  in 

Interference  Cases. 
To  the  Commissioner  of  Patents: 

Sir  :    T  hereby  appeal  to  you  in  person  from  the  deci- 
sion of  the  Examiners  in  Chief,  made ,  19.  .,  in  the 

interference  between  my  application  for  letters  patent  for 

improvement  in and  the  letters  patent  of 

,  in  which  priorit.y  of  invention  was  award- 
ed to  said   The  following  are  assigned 

as  reasons  of  appeal:  (Here  should  follow  an  explicit 
statement  of  the  alleged  errors  in  the  decision  of  the 
Examiners  in  Chief.) 

Signed  at ,  in  the  county  of ,  and  State 

of ,  this day  of ,  19 .  . 


34.  Petition  From  a  Principal  Examiner  to  the  Commis- 
sioner. 

Application  of 

Serial  number 

Subject  of  invention 

To  the  Commissioner  of  Patents: 

Your  petitioner  avers — 

First.    That  he  is  the  applicant  above  named. 

Second.    That  said  application  was  filed  on  the 

day  of ,  19 .  . . 

Third.     That  when  so  filed  said  application  contained. 
claims. 

Fourth.     That  ^-our  petitioner  was  informed  by  office 

265 


letter  of  the ,  19.  .,   (1)  that  his   

claim  was  rendered  vague  and  indefinite  bj-  the  emplo}'- 

ment  of  the  words  " , "  which  words  should 

be  erased;    (2)  that  his claim  was  met  by  certain 

references  which  were  given;    and  (3)  that  the  

claim  was  mere  surplusage  and  should  be  eliminated. 

Fifth.  That  on  the /  day  of your  peti- 
tioner filed  an  amendment  so   eliminating  his    

claim,  and  accompanied  such  amendment  with  a  com- 
munication in  which  he  declined  to  amend  such 

claim,  and  asked  for  another  action  thereon. 

Sixth.  That  your  petitioner  was  then  informed  by  of- 
fice letter  of  the day  of that  the  former 

requirement  relating  to  claim would  be  adhered 

to,  and  that  no  action  would  be  had  on  the  merits  of 
either  claim  until  said  amendment  so  required  had  been 
made. 

Wherefore  your  petitioner  requests  that  the  Examiner 
in  charge  of  such  application  be  advised  that  such  amend- 
ment so  required  by  him  to  said claim  be  not  in- 
sisted upon  and  directed  to  proceed  to  examine  both  said 
remaining  claims  upon  their  merits. 

A  hearing  of  this  petition  is  desired  on  the day 

of ,19... 


Applicant. 
,  1 . . . . , 

Attorney  for  Applicant. 

35.  Petition  for  Copies  of  Rejected  and  Abandoned  Appli- 
cations. 

To  the  Commissioner  of  Patents: 

The  petition  of ,  a  resident  of ,  in 

the  county  of and  State  of  ,  respectfully 

shows : 

First.     That  on  the day  of ,  19.  .,  pat- 
ent No ,  issued  to  one 

266 


Second.    That  noui-  petitioner  is  informed  and  believes 

that  on  tlie   day  of   ,  19.  .,  said  patentee 

filed  in  the  United  States  Patent  Otfice  an  application  for 
patent  for  im])rovement  in   

Third.  That  yonr  petitioner  verily  believes  that  said 
application  has  not  been  prosecuted  during  the  past  two 
years  and  upward ;    and  he  also  verily  believes  that  the 

last  action  had  therein  was  on  or  about  the  day 

of ,  19... 

Fourth.  That  said  application  has  therefore  become 
and  now  stands  abandoned. 

Fifth.  That  on  the   day  of ,  19 .  . ,  said 

patentee  began  suit,  in  the  Circuit  Court  of  the  United 

States  for  the   district  of   ,  against  your 

petitioner,  which  suit  is  based  upon  said  patent,  and  the 
same  is  now  pending  and  undetermined. 

Sixth.  Your  petitioner  is  informed  and  believes  that 
to  enable  him  to  prepare  and  conduct  his  defense  in  such 
suit  it  is  material  and  necessary  that  he  be  allowed  ac- 
cess to  and  copies  of  the  files  of  such  abandoned  case. 

Seventh.     Your  petitioner  therefore  requests  that  he 

or ,  in  his  behalf  and  as  his  attorney,  be  permitted 

to  inspect  and  be  furnished  copies  of  all  or  any  portion 
of  such  case. 


! 


Petitioner. 

By , 

His  Attorney. 

ss: 


On  this day  of ,  19.  .,  before  me,  a  no- 
tary public  in  and  for  said  county  and  State,  personally 

appeared ,  the  above-named  attorney,  who,  being 

b.y  me  dul}^  sworn,  deposes  and  says  that  he  has  read  the 
foregoing  petition  and  knows  its  contents,  and  that  the 
same  is  true,  except  as  to  the  matters  therein  stated  on  in- 

267 


formation  or  belief,  and  as  to  those  matters  he  believes 
it  to  be  true. 


Notary  Puhlic. 
Note. — A  copy  of  this  petition  must  be  served  upon  the  appli- 
cant named  in  the  abandoned  application  or  upon  his  attorney  of 
record. 

36.  Preliminary  Statement  of  Domestic  Inventor. 

[Interference  in  the  United  States 

Patent  Office. 
Preliminary  statement  of 


vs. 


< 


,  of ,  in  the  county  of ,  and 

State  of   ,  being  duly  sworn   (or  affirmed),  doth 

depose  and  say  that  he  is  a  party  to  the  interference  de- 
clared by  the  Commissioner  of  Patents ,  19.  .,  be- 
tween   's  application  for  letters  patent, 

filed ,  19 .  . ,  serial  number ,  and  the  patent 

to ,  granted ,  19  •  • ,  numbered , 

for  a ;   that  he  conceived  the  invention  set  forth 

in  the  declaration  of  interference^  on  or  about  the 

da}^  of ,  19 .  .  ;  that  on  or  about  the day  of 

,  19.  .,  he  first  made  drawings  of  the  invention  (if 

he  has  not  made  a  drawing,  then  he  should  say  that  no 
drawing  of  the  invention  in  issue  has  been  made)  ;  that 
on  the daj^  of ,  19 .  . ,  he  made  the  first  writ- 
ten description  of  the  invention  (if  he  has  not  made  a 
written  description  of  the  invention,  he  should  so  state)  ; 

that  on  or  about  the day  of ,  19 .  . ,  he  first 

explained  the  invention  to  others ;  that  he  first  embodied 
his  invention  in  a  full-size  machine,  which  was  completed 
about  the  day  of ,  19.  .,  and  that  on  the 

Uf  tlif  i)arty  has  (lout)ts  as  to  wlietli(>r  the  matter  of  his  application 
is  projiciiy  involved  in  the  issue  as  declared,  then  in  lieu  of  the  term 
"the  invention  set  forth  in  the  declaration  of  interference,"  he  may  say 
"the  invention  contained  in  the  claims  of  my  application  (or  patent) 
declared  to  be  involved  in  this  interference,"  and  should  specify  such 
claims   hy  number. 

268 


day  of   ,  19.  .,  the  said  machine  was  first 

successfully  operated,  in  the  town  of ,  county  of 

,  and  State  of ,  and  that  he  has  since  con- 
tinued to  use  the  same,  and  that  he  has  manufactured 
others  for  use  and  sale  to  the  following  extent,  viz  (if  he 
has  not  embodied  the  invention  in  a  full-size  machine,  he 
should  so  state;  and  if  he  has  embodied  it  but  has  not 
used  it,  he  should  so  state). 


[Signature  of  inventor.] 

Subscribed  and  sworn  to  before  me  this day  of 

,19-.. 


[Signature  of  justice  or  notary.] 


[Official   character.] 


37.  Preliminary  Statement  of  Foreign  Inventor. 

, [Interference  in  United  States 

vs.  J     Patent  Office. 
Preliminarv  statement  of  ... . 


,  of  London,  in  the  county  of  Middlesex, 

England,  being  duly  sworn,  doth  depose  and  say  that  he 
is  a  party  to  the  interference  declared  by  the  Commis- 
sioner of  Patents,  ,  19.  .,  between  his  application 

for  patent,  filed ,  19 .  . ,  serial  number  ...'...,  and 

the  patent  of ,  granted ,  19 .  . ,  No. 

,  for  an  improvement  in ;  that  he  made  the 

invention  set  forth  in  the  declaration  of  interference,^ 
being  at  that  time  in  England ;  that  patents  for  such  in- 
vention were  applied  for  and  obtained  as  follows : 

Application  filed  in  Great  Britain, ,  19.  .,  pat- 
ent dated ,  19  •  • ,  No ;  published  the 

day  of ,  19 .  . ,  and  sealed  the day  of , 

ilf  the  party  has  doubts  as  to  whether  the  matter  of  his  application  is 
properly  involved  in  the  issue  as  declared,  then  in  lieu  of  the  terms  "the 
invention  set  forth  in  the  declaration  of  interference,"  he  may  say  "the 
invention  contained  in  the  claims  of  my  application  (or  patent)  declared 
to  be  involved  in  this  interference,"  and  should  specify  such  claims  by 
number. 

269 


19.  .  ;    application  filed  in  France  ,  19.  .,  patent 

dated  ,  19 .  . ,  No ;    published  the   

day  of ,  19 .  . ,  and  sealed  the day  of , 

19.  ..  (If  a  patent  has  not  been  obtained  in  any  coun- 
tiy  it  should  be  so  stated.) 

That  such  invention  was  fully  described  in  a  maga- 
zine published  at ,  on  the  daj-  of , 

19 .  . ,  by ,  entitled (see  page 

...  of  such  magazine),  and  in  the  following  newspapers  : 
,  of  ,  19 .  .  ;  ,  pub- 
lished at ,  on ,  19 .  . .     (If  the  invention  w^as 

never  described  in  a  printed  publication  it  should  be  so 
stated.) 

The  knowledge  of  such  invention  was  introduced  into 
the  United  States  under  the  following  circumstances: 

On ,  19 .  . ,  the  said wrote  a  letter  to 

,  residing  at ,  State  of ,  de- 
scribing such  invention  and  soliciting  his  services  in  pro- 
curing a  patent  therefor  in  the  United  States.  This  let- 
ter, he  is  informed  and  believes,  was  received  by  the  said 

on   ,  19 .  . .     Also  on 

19.  .,  he  wrote  a  letter  to  the  firm  of ,  of 

,  State  of  ,  describing  such  iiivention  and 

requesting  their  assistance  in  manufacturing  and  putting 
it  on  the  market,  which  letter,  he  is  informed  and  be- 
lieves, was  received  by  them  on ,  19.  ..  Such  in- 
vention was  manufactured  b}'  such  firm  and  described  in 
their  trade  circulars,  as  he  is  informed  and  verily  be- 
lieves, on  or  about  the  - day  of ,  19.  ..     (If 

the  invention  has  not  been  introduced  into  the  United 
States  otherwise  than  by  the  application  papers,  it  should 
be  so  stated,  and  the  date  at  which  such  papers  were  re- 
ceived in  the  United  States  alleged.) 


[Signature  ot  inventor.] 

270 


Subscribed  and  sworn  to  before  me  this day  of 

,19... 


[Signature  of  justice  or  notary.] 
[Official   character.] 


ASSIGNMENTS. 

38.  Of  an  Entire  Interest  in  an  Invention  Before  the  Issue 
of  Letters  Patent. 

Whereas  I, ,  of ,  county  of 

and  State  of  ,  have  invented  a  certain  improve- 
ment in ,  for  which  I  am  about  to  make  applica- 
tion for  letters  patent  of  the  United  States ;  and  whereas 

,  of ,  county  of ,  and  State 

of ,  is  desirous  of  acquiring  an  interest  therein : 

Now,  therefore,  in  consideration  of dollars,  the 

receipt  of  which  is  hereby  acknowledged,  I,    

,  by  these  presents  do  sell,  assign,  and  transfer 

unto tlie  full  and  exclusive  right  to  the 

said  invention,  as  described  in  the  specification  executed 

b3'  me  on  the day  of ,  19 .  • ,  preparatory  to 

obtaining  letters  patent  of  the  United  States  therefor; 
and  I  hereby  request  the  Commissioner  of  Patents  to 

issue  said  letters  patent  to as  the  assignee, 

for  his  interest,  for  the  sole  use  and  behoof  of  said 
and  his  legal  representatives. 

Executed day  of ,  19 .  . . 

[seal.] 

In  presence  of — 


(If  assignment,  grant,  or  conveyance  be  acknowledged  as  provided  for 
by  Rule  185,  the  certificate  will  be  prima  facie  evidence  of  tlie  execution 
of  such  assignment,  grant,  or  conveyance.) 


271 


39.  Of  the  Entire  Interest  in  Letters  Patent. 

Whereas  I, ,  of ,  county  of , 

State  "of ,  did  obtain  letters  patent  of  the  United 

States  for  an  improvement  in ,  which  letters  pat- 
ent are  numbered ,  and  bear  date  the day 

of ,  19.  .  ;    and  whereas  I  am  now  the  sole  owner 

of  said  patent ;  and  whereas ,  of ,  county 

of ,  and  State  of ,  is  desirous  of  acquiring 

the  entire  interest  in  the  same : 

Now,  therefore,  in  consideration  of  the  sum  of 

dollars,  the  receipt  of  which  is  hereby  acknowledged,  I, 

,  by   these  presents  do  sell,  assign,  and 

transfer  unto  the  said ,  the  whole  right, 

title,  and  interest  in  and  to  the  said  letters  patent  there- 
for aforesaid ;    the  same  to  be  held  and  enjoyed  by  the 

said ,  for  his  own  use  and  behoof,  and  for 

his  legal  representatives,  to  the  full  end  of  the  term  for 
which  said  letters  patent  are  granted,  as  fully  and  en- 
tirely as  the  same  would  have  been  held  by  me  had  this 
assignment  and  sale  not  been  made. 

Executed dav  of ,  19.  .. 

[l.  s.] 

In  presence  of 


(See  note  under  Form  38.) 

40.  Of  an  Undivided  Interest  in  Letters  Patent. 

Whereas  1,    ,  of    ,  county  of 

,  State  of ,  did  obtain  letters  patent  of  the 

United  States  for  an  improvement  in ,  which  let- 
ters patent  are  numbered    ,  and  bear  date  the 

day  of ,  .  .  .  .  ;  and  whereas , 

of ,  county  of ,  State  of ,  is  desirous 

of  acquiring  an  interest  in  the  same: 

Now,  therefore,  in  consideration  of  the  sum  of 

dolhirs,  the  receipt   of  which  is  hei'eby  acknowledged,  I 

272 


,   by  these   presents  do  sell,   assign,   and 

transfer  unto  the  said ,  the  undivided  one- 
half  part  of  the  whole  right,  title,  and  interest  in  and  to 
the  said  invention  and  in  and  to  the  letters  patent  there- 
for aforesaid ;    the  said  undivided  one-half  part  to  be 

held  b}^ ,  for  his  own  use  and  behoof,  and 

his  legal  representatives,  to  the  full  end  of  the  term  for 
which  said  letters  patent  are  granted,  as  fully  and  en- 
tirely as  the  same  would  have  been  held  by  me  had  this 
assignment  and  sale  not  been  made. 
Executed daj^  of ,  19 . . . 

[L.    S.] 

In  presence  of — 


(See  note  under  Form   38.) 

41.  Territorial  Interest  After  Grant  of  Patent. 

Whereas  I, ,  of ,  county  of , 

State  of ,  did  obtain  letters  patent  of  the  United 

States  for  an  improvement  in   ,  which  letters 

patent  are  numbered   ,  and  bear  date  the   

day  of  ...,..,  in  the  year  19 .  .  ;  and  whereas  I  am  now 
the  sole  owner  of  the  said  patent  and  of  all  rights  under 
the  same  in  the  below-recited  territory ;    and  whereas 

,  of    ,  county  of    ,  State  of 

,  is  desirous  of  acquiring  an  interest  in  the  same : 

Now,  therefore,  for  and  in  consideration  of  the  sum 

of dollars  to  me  in  hand  paid,  the  receipt  of  which 

is  hereby  acknowledged,  I ,  by  these  pres- 
ents do  sell,  assign,  and  transfer  unto  the  said   

all  the  right,  title,  and  interest  in  and  to  the  said 

invention,  as  secured  to  me  by  said  letters  patent,  for, 

to,  and  in  the  State  of ,  and  for,  to,  or  in  no  other 

place  or  places ;   the  same  to  be  held  by 

within  and  throughout  the  above-specified  territory,  but 
not  elsewhere,  for  his  own  use  and  behoof,  and  of  his 
20  273 


legal  representatives,  to  the  full  end  of  the  term  for 
which  said  letters  patent  are  granted,  as  fully  and  en- 
tirely as  the  same  would  have  been  held  by  me  had  this 
assignment  and  sale  not  been  made. 
Executed day  of ,  19 .  . . 


[l.  s. 


In  presence  of — 


(See  note  under  Form   38.) 

42.  License — Shop-Right. 

In  consideration  of  the  sum  of  dollars,  to  be 

paid  by  the  firm  of ,  of ,  in  the  county 

of ,  State  of ,  I  do  hereby  license  and  em- 
power the  said   to  manufacture  in  said 

(or  other  place  agreed  upon)  the  improvement  in 

,  for  which  letters  patent  of  the  United  States  No. 

were  granted  to  me  the day  of ,  in 

the  3^ear  19 . . ,  and  to  sell  the  machines  so  manufactured 
throughout  the  United  States  to  the  full  end  of  the  term 
for  which  said  letters  patent  are  granted. 

Signed  at  ,  in  the  county  of and 

State  of    ,  this   day  of   , 

19... 


In  presence  of- 


43.  License — Not  Exclusive — With  Royalty. 

This  agreement,  made  this day  of ,  19 .  . , 

between ,  of ,  in  the  county  of 

and  State  of ,  party  of  the  first  part,  and 

,  of ,  in  the  county  of and 

State  of   ,  party  of  the  second  part,  witnesseth, 

tliat   whereas   letters   patent   of  the   United   States   No. 

,  for  improvement  in ,  were  granted 

^74 


to  tlie  party  of  the  first  part  in  the day  of , 

19.  .  ;  and  whereas  the  party  of  the  second  part  is  de- 
sirous of  manufacturing • .  .  .  containing  said  pat- 
ented improvements :  Now,  therefore,  the  parties  have 
agreed  as  follows : 

I.  The  party  of  the  first  part  hereby  licenses  and 
empowers  the  party  of  the  second  part  to  manufacture,, 
subject  to  the  conditions  liereinafter  named,  at  their  fac- 
tory in   ,  and  in  no  other  place  or  places,  to  the 

end  of  the  term  for  which  said  letters  patent  were  grant- 
ed,        containing  the  patented  improvements, 

and  to  sell  the  same  within  the  United  States. 

II.  The  part}^  of  the  second  part  agrees  to  make  full 
and  true  returns  to  the  party  of  the  first  part,  under 

oath,  upon  the  first  days  of and in  each 

year,  of  all containing  the  patented  improve- 
ments manufactured  by  them. 

III.  The  party  of  the  second  part  agrees  to  pay  to 

the  part}^  of  the  first  part dollars  as  a  license  fee 

upon  every manufactured  by  said  party  of  the 

second  part  containing  the  patented  improvements; 
provided,  that  if  the  said  fee  be  paid  upon  the  days  pro- 
vided herein  for  semi-annual  returns,  or  within   

days  thereafter,  a  discount  of per  cent,  shall  be 

made  from  said  fee  for  prompt  payment. 

IV.  Upon  a  failure  of  the  party  of  the  second  part  to 
make  returns  or  to  make  payment  of  license  fees,  as 

herein  provided,  for claj^s  after  the  days  herein 

named,  the  party  to  the  first  part  may  terminate  this  li- 
cense by  serving  a  written  notice  upon  the  party  of  the 
second  part ;  but  the  party  of  the  second  part  shall  not 
thereby  be  discharged  from  any  liability  to  the  party  of 
the  first  part  for  any  license  fees  due  at  the  time  of  the 
service  of  said  notice. 

In  witness  whereof  the  parties  above  named  have  here- 

275 


unto  set  their  hands  the  day  and  year  first  above  written 
at ,  in  the  county  of and  State  of 


In  the  presence  of — 


DEPOSITIONS. 

44.  Notice  of  Taking*  Testimony. 

, , ,19.. 

In  the  matter  of  the  interference  between  the  application 

of for  a machine  and  the  patent 

No ,  granted ,  19 .  . ,  to , 

now  pending  before  the  Commissioner  of  Patents. 
SiE :     You  are  hereby  notified  that  on  Wednesday, 

,  19 .  . ,  at  the  office  of ,  Esq.,  No. 

Street,   , at  o  'clock  in  the 

forenoon,  I  shall  proceed  to  take  the  testimony  of 

,  residing  at ,  and ,  resid- 
ing at ,  all  of ,  as  witnesses  in  my  be- 
half. 

The  examination  will  continue  from  day  to  day  until 
completed.    You  are  invited  to  attend  and  cross-examine. 


By , 

His  Attorney. 

Signed  at ,  in  the  county  of  and  State 

of ,  this day  of ,  19 .  . . 

Witnesses : 


Proof  of  Service. 


ss: 

276 


Personally  appeared  before  me,  a (or  other 

officer),  the  above-iiained ,  who,  being  duly 

sworn,  deposes  and  says  that  he  served  tlie  above  notice 

upon    ,  the  attorney  of  the  said    

,  at  .  .  o  'clock of  the day  of , 

19.  ,,  b}'  leaving  a  copy  at  his  office  in   ,  in  the 

county  of and  State  of ,  in  charge  of 


Sworn  to  and  subscribed  before  me  at ,  in  the 

county  of and  State  of ,  this day 

of ,19... 

[seal.]  

[Signature  of  justice  or  notary.] 


[Official   character.] 

(Service  may  be  acknowdedged  by  the  party  upon 
whom  it  is  made  as  follows : 

Service  of  the  above  notice  acknowledged  this 

of ,19... 


By , 

His  Attornei}. 

45.  Form  of  Deposition. 

Before  the  Commissioner  of  Patents,  in  the  matter  of  the 

interference  between  the  application   of    

for  a and  Letters  Patent  No 

granted ,  19 .  . ,  to 

Depositions  of  witnesses  examined  on  behalf  of   

,  pursuant  to  the  annexed  notice,  at  the  office 

of ,  No Street, , , 

on , ,  19 .  . .    Present, 

,  Esq.,  on  behalf  of   ,  and 

,  Esq.,  on  behalf  of 

,  being  duly  sworn  (or  affirmed),  doth  de- 
pose and  say,  in  answer  to  interrogatories  proposed  to 

277 


him  by ,  Esq.,  counsel  for , 

as  follows,  to  wit : 

Question  1.  What  is  your  name,  age,  occupation,  and 
residence  ? 

Answer  1.  My  name  is ;  I  am  .  . .  years 

of  age ;  I  am  a  manufacturer  of and  reside  at 

,  in  the  State  of 

Question  2,  etc 

And  in  answer  to  cross-interrogatories  proposed  to  him 

by ,  Esq.,  counsel  for ,  he 

saith : 

Cross-question  1.  How  long  have  you  known   


Answer  1. 


48.  Certificate  of  Officer. 

[To  follow  deposition.] 
SS  : 


I, ,  a  notary  public  within  and  for  the 

county  of and  State  of (or  other  officer, 

as  the  case  may  be),  do  hereby  certify  that  the  foregoing 

de])osition  of was  taken  on  behalf  of 

in  pursuance  of  the  notice  hereto  an- 
nexed, before  me,  at   ,  in  the  city  of   ,  in 

said  county,  on  the    day   (or  days)    of   , 

19.  .  ;  that  said  witness  was  by  me  dul}^  sworn  before  the 
commencement  of  his  testimony;    that  the  testimony  of 

Sill  (I  witness  was  written  out  by  myself   (or  b^^   

in  my  presence)  ;  that  the  opposing  party, 

,  wns  i)res('nt  (or  absent  or  represented  by  coun- 
sel) (luring  llie  taking  of  said  testimony;  that  said  testi- 
mony was  taken  at  ,  and  was  commenced  at   .  .  . 

0  'clock on  the  of >  19  •  • ,  was  con- 
tinued pursuant  to  adjournment  on  the , 

278 


(etc.),  and  was  concluded  on  the of  said  montli ; 

that  the  deposition  was  read  by,  or  to,  each  witness,  be- 
fore the  witness  signed  the  same ;  that  I  am  not  con- 
nected by  bk)0(l  or  marriage  with  either  of  said  parties, 
nor  interested  directly  or  indirectly  in  the  matter  in  con- 
troversy. 

In  testimony  whereof  I  have  hereunto  set  my  hand  and 

affixed  by  seal  of  office  at   ,  in  said  county,  this 

day  of ,19... 

[seal.]  

[Signature  of  justice  or  notary.] 


[Official  character.] 

(The  magistrate  will  then  append  to  the  deposition 
the  notice  under  which  it  was  taken,  and  will  seal  up 
the  testimony  and  direct  it  to  the  Commissioner  of 
Patents,  placing  upon  the  envelope  a  certificate  in  sub- 
stance as  follows : ) 

I  hereby  certify  that  the  within  deposition  of 

(if  the  package  contains  more  than  one  deposition 

give  all  the  names),  relating  to  the  matter  of  interfer- 
ence between    and    ,  was 

taken,  sealed  up,  and  addressed  to  the  Commissioner  of 
Patents  by  me  this day  of ,  19 .  . . 

[seal.]  

[Signature  of  justice  or  notary.] 


[Official  character.] 


279 


APPEALS   FROM   THE   COMMISSIONER   OF   PATENTS 

TO  THE  COURT  OF  APPEALS  OF  THE 

DISTRICT  OF  COLUMBIA. 


Court  Rules. 
No.  XXI. 


APPEALS  FROM  THE  COMMISSIONER  OF  PATENTS. 

1.  All  certified  copies  of  papers  and  evidence  on  ap- 
peal from  the  decision  of  the  Commissioner  of  Patents, 
authorized  by  Section  9  of  the  Act  of  Congress  approved 
February  9,  1893,  shall  be  received  by  the  clerk  of  this 
court,  and  the  cases,  by  titling  and  number  as  they  ap- 
pear on  the  record  in  the  Patent  Office,  shall  be  placed  on 
a  separate  docket  from  the  docket  of  the  cases  brought 
into  this  court  by  appeal  from  the  Supreme  Court  of  the 
District  of  Columbia,  to  be  designated  as  the  ''Patent 
Appeal  Docket ' ' ;  and  upon  filing  such  copies  the  party 
appellant  shall  deposit  with  the  clerk,  or  secure  to  be 
paid  as  demanded,  an  amount  of  money  sufficient  to 
cover  all  legal  costs  and  expenses  of  said  appeal;  and 
upon  failure  to  do  so  his  appeal  shall  be  dismissed.  The 
clerk  shall,  under  this  titling  of  the  case  on  the  docket, 
make  brief  entries  of  all  papers  filed  and  of  all  proceed- 
ings had  in  the  case. 

2.  The  appellant,  upon  complying  with  the  preceding 
section  of  this  rule,  shall  file  in  the  case  a  petition  ad- 
dressed to  the  court,  in  which  he  shall  briefly  set  forth 
ami  show  that  he  has  complied  with  the  requirements  of 
.sections  4912  and  4913  of  the  Revised  Statutes  of  the 
riiited  States  to  entitle  him  to  an  appeal,  and  praying 
that  Ills  ai)poal  may  be  heard  ui)()ii  and  for  the  reasons 

280 


assigned  therefor  to  the  Commissioner;  and  said  appeal 
shall  he  taken  witiiiii  forty  (hiys  from  the  date  of  the  rul- 
ing' or  order  appealed  from  and  not  afterwards. 

If  the  petition  for  an  appeal  and  the  certified  copies 
of  papers  and  evidence  on  appeal  mentioned  in  this  and 
the  preceding  section  of  this  rule  shall  not  be  filed  and 
the  case  duly  docketed  in  this  court  within  fort}'  days 
(exclusive  of  Sundays  and  legal  holidays)  from  the  day 
upon  which  notice  of  appeal  is  given  to  the  Commis- 
sioner of  Patents,  the  commissioner,  upon  such  facts 
being  brought  to  his  attention  by  motion  of  the  appellee, 
duly  served  upon  the  appellant  or  his  attorne.y,  may  take 
such  further  proceedings  in  the  case  as  may  be  neces- 
sary to  dispose  of  the  same,  as  though  no  notice  of  appeal 
had  ever  been  given. 

3.  The  clerks  shall  provide  a  minute  book  of  his  office, 
in  which  he  shall  record  every  order,  rule,  judgment,  or 
decree  of  the  court  in  each  case,  in  the  order  of  time  in 
which  said  proceedings  shall  occur ;  and  of  this  book  the 
index  shall  be  so  kept  as  to  show  the  name  of  the  party 
applying  for  the  patent,  the  invention  by  subject  matter 
or  name,  and,  in  the  cases  of  interference,  the  name  of 
the  party  with  whose  pending  application  or  unexpired 
patent  the  subsequent  application  is  supposed  to  inter- 
fere. 

4.  The  cases  on  this  docket  shall  be  called  for  argu- 
ment on  the  second  Monday  of  January,  March,  May, 
and  November  in  each  year,  and  the  cases  shall  be  called 
in  regular  order  as  they  may  stand  on  the  docket.  A 
copy  of  these  rules  shall  be  furnished  to  the  Commis- 
sioner of  Patents ;  and  it  shall  be  the  duty  of  the  clerk 
of  this  court  to  give  special  notice  to  the  said  Commis- 
sioner at  least  fifteen  days  immediately  preceding  the 
times  thus  respectively  fixed  for  the  hearing  of  said 
cases ;  the  said  notice  to  name  the  place  of  the  sitting  of 
the  court,  the  titling  of  the  cases  on  the  docket  of  this 
court,  the  respective  numbers  thereof,  and  the  number 

281 


of  each  case  as  it  appears  of  record  in  the  Patent  Office ; 
and  thereupon  the  Commissioner  shall  give  notice  to  the 
parties  interested  or  concerned  by  notice  addressed  to 
them  severally  by  mail. 

5.  The  clerk  shall  furnish  to  any  applicant  a  copy  of 
any  paper  in  any  of  said  appeals  on  payment  of  the  legal 
fees  therefor. 

6.  The  appeals  from  the  Commissioner  of  Patents  shall 
be  subject  to  all  the  rules  of  this  court  provided  for  other 
cases  therein,  except  where  such  rules,  from  the  nature 
of  the  case,  or  by  reason  of  special  provisions  inconsistent 
therewith,  are  not  applicable. 

7.  Models,  diagrams,  and  exhihits  of  material  forming 
part  of  the  evidence  taken  in  the  court  helow  or  m  the 
Patent  Office  in  any  case  pending  in  this  court  on  writ  of 
error  or  appeal  shall  he  placed  in  the  custody  of  the  clerk 
of  this  court  at  least  three  days  hefore  the  case  is  heard 
or  submitted. 

8.  All  models,  diagrams,  and  exhibits  of  material 
placed  in  the  custody  of  the  clerk  for  the  inspection  of 
the  court  on  the  hearing  of  the  case  must  be  taken  away 
by  the  parties  within  twenty  days  after  the  case  is  de- 
cided. When  this  is  not  done,  it  shall  be  the  duty  of  the 
clerk  to  notify  the  counsel  in  the  case  and  the  Commis- 
sioner of  Patents,  by  mail  or  otherivise,  of  the  require- 
ments of  this  rule;  and  if  the  articles  are  not  removed 
ivithin  ten  days  after  the  notice  is  given,  he  shall  destroy 
them  or  make  such  other  disposition  of  them  as  to  him 
may  seem  best. 

No.  XXII. 

OPINIONS  OF  LOWER  COURT  AND  COMMISSIONER  OF  PATENTS 
MADE  PART  OP  RECORD. 

Whenever  the  judgment,  decree,  or  order  appealed 
from  is  based  upon  or  has  reference  to  a  written  opinion 
fiksd  in  the  case  by  the  court  below,  such  opinion  shall 
constitute  a  ])ai-t  of  Iho  transcrii)t  to  be  sent  to  this  court; 

282 


and  such  opinion,  and  also  the  written  reasons  or  grounds 

assigned  by  the  Connnissioner  of  Patenst  in  appeals  from 

the  Patent  Office,  shall  be  printed  as  part  of  the  record 

to  be  printed  under  Rule  6. 

***** 

No.  XXVII. 

SUNDAYS  AND  LEGAL  HOLIDAYS. 

That  wherever  days  are  mentioned  in  the  foregoing 
rules  as  limitations  of  time,  they  shall  be  construed  to 
exclude  Sundays  and  legal  holidays,  hut  to  include  Sat- 
urday half  holidays. 

Instructions  to  Appellants. 

The  Act  of  Congress  creating  the  Court  of  Appeals  of 
the  District  of  Columbia,  approved  February  9,  1893, 
gives  to  that  court  jurisdiction  of  appeals  from  final  de- 
cisions of  the  Commissioner  of  Patents  both  in  ex  parte 
cases  and  in  interference  cases. 

Where  an  appeal  of  either  class  is  to  be  prosecuted  to 
the  Court  of  Appeals  of  the  District  of  Columbia,  the 
first  step  is  to  file  with  the  Commissioner  of  Patents  a 
notice  of  appeal,  together  with  an  assignment  of  reasons 
of  appeal.  This  step  must  be  taken  within  forty  days, 
exclusive  of  Sundays  and  legal  holida^ys,  hut  including 
Saturday  half  holidays,  from  the  date  of  the  decision  of 
the  Commissioner  of  Patents  sought  to  be  reviewed. 

The  next  step  in  the  prosecution  of  such  an  appeal  is 
to  file  with  the  clerk  of  the  Court  of  Appeals  of  the  Dis- 
trict of  Columbia  a  certified  transcript  of  the  record  and 
proceedings  in  the  Patent  Office  relating  to  the  ease  in 
question,  together  with  a  petition  for  appeal,  addressed 
to  the  Court  of  Appeals  of  the  District  of  Columbia,  make 
a  deposit  of  $15,  and  have  the  appearance  of  a  member  of 
the  bar  of  that  court  entered  for  the  appellant. 

The  notice  of  appeal  and  reasons  of  appeal  required  to 
be  served  upon  the   Commissioner  of  Patents  may  be 

283 


sig-neil  by  the  appellant  or  by  his  attorney  of  record  in 
the  Patent  Office,  but  the  petition  for  an  appeal  that  is 
filed  in  the  Court  of  Appeals  of  the  District  of  Columbia 
must  be  signed  by  a  member  of  the  bar  of  the  Court  of 
Appeals  of  the  District  of  Columbia,  who  should  enter  a 
regular  appearance  in  the  case  in  the  clerk's  office. 

After  the  petition  for  the  appeal,  the  certified  tran- 
script, and  the  docket  fee  of  $15  have  been  lodged  in  the 
office  of  the  clerk  of  the  Court  of  Appeals  of  the  District 
of  Columbia,  the  clerk  will  send  to  the  solicitor  of  record 
an  estimate  of  the  cost  of  printing  the  petition,  tran- 
script, etc. 

When  the  amount  called  for  is  deposited,  the  clerk 
will  cause  the  printing  to  be  done  under  his  supervision, 
and  when  the  printing  is  completed  the  case  will  be  put 
on  the  calendar  for  hearing  at  the  next  term  at  which 
patent  appeals  are  heard. 

In  interference  cases  the  clerk  is  authorized  to  receive 
printed  copies  of  the  evidence,  such  as  have  been  used  in 
the  Patent  Office,  thus  saving  to  the  appellant  the  cost 
of  reprinting  such  evidence.  When  such  printed  copies 
are  supplied,  twenty -five  copies  must  be  furnished. 

As  above  stated,  the  notice  of  appeal  and  the  reasons 
of  appeal  are  required  to  be  filed  with  the  Commissioner 
of  Patents  within  forty  days,  exclusive  of  Sundays  and 
legal  holidays,  hut  including  Saturday  half  holidays,  of 
the  date  of  the  decision  appealed  from,  but  the  petition 
for  appeal  and  the  certified  transcript  which  are  to  be 
filed  in  the  Court  of  Appeals  of  the  District  of  Columbia 
are  reciuired  to  be  filed  in  that  court  within  forty  days, 
exclusive  of  Sundays  and  legal  holidays,  hut  including 
Snturdaif  half  holidays,  from  the  time  of  the  giving  of 
tlic  notice  of  appeal;  that  is  to  say,  if  the  decision  com- 
plained of  was  rendered,  for  instance,  on  tlie  1st  day  of 
July,  190(5,  the  party  aggrieved  might  file  his  notice  of 
appeal,  with  the  reasons  of  appeal,  at  any  time  within 
foi'ly  (hiys,  exclusive  of  Suiulays  and  legal  holidays,  hut 

284 


including  Saturday  half  Jwlidaj/s,  thereafter;  but  if  he 
filed  his  notice  of  appeal  and  reasons  therefor  on  the 
10th  day  of  July,  1906,  he  would  be  required  to  file  his 
petition  for  appeal  and  the  certified  transcript  in  the 
Court  of  Appeals  of  the  District  of  Columbia  within 
forty  days,  exclusive  of  Sundays  and  legal  holidays,  hut 
including  Saturday  h(df  liolidajis,  of  the  10th  day  of 
July,  1906. 

For  convenience  of  appellants  and  to  secure  uniform- 
ity in  practice  the  following  forms  are  suggested  as 
guides  in  the  prosecution  of  patent  appeals : 

Forms. 

1.  FORM  OF  NOTICE  OF  APPEAL  TO  THE  COURT  OF  APPEALS  OF 
THE  DISTRICT  OF  COLUMBIA  IN  AN  EX  PARTE  CASE, 
WITH  REASONS  OF  APPEAL  AND  REQUEST  FOR  TRAN- 
SCRIPT. 

In  the  United  States  Patent  Office. 
In  re  application  of 


Serial  No 

Filed 

Improvements  in 


To  the  Commissioner  of  Patents: 

Sir  :  You  are  hereby  notified  of  n\y  appeal  to  the 
Court  of  Appeals  of  the  District  of  Columbia  from  your 

decision,  rendered  on  or  about  the day  of , 

19 .  . ,  rejecting  my  above-entitled  application  and  refus- 
ing me  a  patent  for  the  invention  set  forth  therein. 

The  following  are  assigned  as  reasons  of  appeal : 

[Here  insert  in  separate  counts  the  specific  errors  complained  of.l 


By , 

His  Attorney. 

285 


2.  FORM  OF  PETITION  FOR  AN  APPEAL  TO  THE  COURT  OF  AP- 
PEALS OF  THE  DISTRICT  OF  COLUMBIA  IN  AN  EX  PARTE 
CASE. 

In  the  Court  of  Appeals  of  the  District  of  Columbia. 
In  re  application  of 


Serial  No 

Filed 

Improvements  in 


To  the  Court  of  Appeals  of  the  District  of  Columhia: 

Your  petitioner, ,  of ,  in  the 

county  of ,  and  State  of ,  respectfully  rep- 
resents : 

That  he  is  the  original  and  first  inventor  of  certain 
new  and  useful  improvements  in 

That  on  the day  of ,  19 .  . ,  in  the  manner 

prescribed  by  law,  he  presented  his  application  to  the 
Patent  Office,  praying  that  a  patent  be  issued  to  him  for 
the  said  invention. 

That  such  proceedings  were  had  in  said  office  upon 

said  application ;  that  on  the day  of ,  19  •  •  j 

it  was  rejected  by  the  Commissioner  of  Patents  and  a  pat- 
ent for  said  invention  was  refused  him. 

That  on  the  day  of  ,  19.  .,  your  peti- 
tioner, pursuant  to  Sections  4912  and  4913,  Revised 
Statutes,  United  States,  gave  notice  to  the  Commissioner 
of  Patents  of  his  appeal  to  this  honorable  court  from  his 
refusal  to  issue  a  patent  to  him  for  said  invention  upon 
said  application  as  aforesaid,  and  filed  with  liiiii,  in  writ- 
ing, the  following  reasons  of  appeal : 

[Here   recite  the  reasons  of  appeal  assigned   in   tlie  notice  to  the  Com- 
missioner.] 

286 


That  the  Commissioner  of  Patents  has  furnished  him 
a  certified  transcript  of  the  record  and  proceedings  re- 
lating to  said  application  for  patent,  which  transcript  is 
filed  herewith  and  is  to  he  deemed  and  taken  as  a  part 
hereof. 

Wherefore  your  petitioner  prays  that  his  said  appeal 
may  be  heard  upon  and  for  the  reasons  assigned  there- 
for to  the  Commissioner  as  aforesaid,  and  that  said  ap- 
peal may  be  determined  and  the  decision  of  the  Commis- 
sioner be  revised  and  reversed,  that  justice  may  be  done 
in  the  premises. 


By 


His  Attorney. 


[To  be  signed  here  by  a  member  of  the  bar  of 
the  Court  of  Appeals  of  D.  C] 


Solicitor  and  of  Counsel. 

3.  FORM  OF  NOTICE  OF  APPEAL  TO  THE  COURT  OF  APPEALS 
OF  THE  DISTRICT  OF  COLUMBIA  IN  AN  INTERFERENCE 
CASE,  WITH  REASONS  OF  APPEAL  AND  REQUEST  FOR 
TRANSCRIPT. 

In  the  United  States  Patent  Office. 
Before  the  Commissioner  of  Patents. 


Interference  No Subject-matter 

vs.  )^ 

Improvements  iu 


And  now^  comes ,  by ,  his 

attorney,  and  gives  notice  to  the  Commissioner  of  Pat- 
ents of  his  appeal  to  the  Court  of  Appeals  of  the  District 
of  Columbia  from  the  decision  of  the  said  Commissioner, 

rendered  on  or  about  the   day  of   ,  19.  ., 

awarding  priority  of  invention  to iu  the 

287 


above-entitled  case,  and  assigns  as  liis  reasons  of  appeal 
the  following : 

[Here  set  out  in  separate  counts  the  specific  errors  in  the  Commissioner's 
decision  complained  of.] 


By ,        ^ 

His  Attorney. 

4.  FORM  OF  PETITION  FOR  AN  APPEAL  TO  THE  COURT  OF  AP- 
PEALS OF  THE  DISTRICT  OF  COLUMBIA  IN  AN  INTERFER- 
ENCE CASE. 

In  the  Court  of  Appeals  of  the  District  of  Colmnhia. 
In  re  Interference  No 


'] 

Appellant,! 


vs. 


To  the  Court  of  Appeals  of  the  District  of  Columbia: 

Your  petitioner, ,  of ,  in  the 

county  of ,  and  State  of ,  respectfully^  rep- 
resents : 

That  he  is  the  original  and  first  inventor  of  certain 
new  and  useful  improvements  in 

That  on  the day  of ,  19 .  . ,  in  the  manner 

prescribed  by  law,  he  presented  his  application  to  the 
Patent  Office,  praying  that  a  patent  be  issued  to  him  for 
the  said  invention. 

That  thereafter,  to  wit,  on  the day  of , 

19 .  . ,  an  interference  proceeding  was  instituted  and  de- 
clared between  his  said  application,  and  a  pending  ap- 
plication of  one ,  serial  No ,  filed 

,  for  a  similar  invention. 

That  the  subject-matter  of  said  interference  as  set 
forth  in  the  official  declaration  was  as  follows : 

I  Hero  state  the  issues  ol'  the  iiiterrorcnie. J 

288 


That  thereafter,  to  wit,  on  tlie day  of , 

19.  .,  the  case  having  been  submitted  upon  the  prelim- 
inary statements  and  evidence  presented  by  the  parties 
thereto,  tlie  Examiner  of  Interferences  rendered  a  de- 
cision awarding  priority  of  invention  to 

That,  pursuant  to  the  statutes  and  the  rules  of  practice 
in  the  Patent  Oiifice  in  such  case  made  and  i)rovide(l, 

appealed  from  the  said  adverse  decision 

of  the  Examiner  of  Interferences  to  the  Board  of  Exam- 
iners in  Chief,  and  the  case  having  been  argued  and  sub- 
mitted to  said  board,  a  decision  was  rendered  by  said 

board  on  the day  of ,  19-  •,  affirming  (or 

reversing)  the  decision  of  the  Examiner  of  Interferences. 

That  thereafter,  pursuant  to  said  statutes  and  rules, 

appealed  from  the  said  adverse  decision 

of  the  Board  of  Examiners  in  Chief  to  the  Commissioner 
of  Patents,  and  the  same  coming  on  to  be  heard  and  hav- 
ing been  argued  and  submitted,  a  decision  was,  on  the 
day  of ,  19 .  . ,  rendered  by  the  Commis- 
sioner adverse  to  your  petitioner,  affirming  (or  revers- 
ing) the  decision  of  the  Board  of  Examiners  in  Chief  and 
awarding  priority  of  invention  to  the  said 

That  on  the day  of ,  19  •  . ,  your  peti- 
tioner, pursuant  to  Sections  4912  and  4913,  Revised  Stat- 
utes, United  States,  gave  notice  to  the  Commissioner  of 
Patents  of  his  appeal  to  this  honorable  court  from  his 

decision  awarding  priority  of  invention  to  said 

,  as  aforesaid,  and  filed  with  him,  in  writing,  the 

following  reasons  of  appeal : 

[Here  insert  reasons  of  appeal  assigned  in  notice  to  Commissioner.] 

That  the  Commissioner  of  Patents  has  furnished  your 
petitioner  a  certified  transcript  of  the  record  and  pro- 
ceedings relating  to  said  interference  case,  which  tran- 
script is  filed  herewith  and  is  to  be  deemed  and  taken  as 
a  part  hereof. 

Wherefore  your  petitioner  prays  that  his  said  appeal 

21  289 


may  be  heard  upon  and  for  the  reasons  assigned  therefor 
to  the  Commissioner,  as  aforesaid,  and  that  said  appeal 
may  be  determined  and  the  decision  of  the  commissioner 
be  revised  and  reversed,  that  justice  may  be  done  in  the 
premises. 


By , 

His  Attorney. 


[To  be  signed  here  by  a  member  of  the  bar  of 
the  Court  of  Appeals  of  D.  C] 


Solicitor  and  of  Counsel. 


290 


INDEX  TO  RULES. 

Kul? 

Abandoned,  forfeited,  revived,  and  renewed  applications. 
(See  Abandonment,  Forfeiture,  and  Eenewal.) 

Abandonment, 

of  application  by  failure  to  complete   31,  171 

by  failure  to  prosecute   31,  77,  171 

by  intent  of  applicant    171 

considered,  ujion  renewal  of  application       175 

Administrators  and  Executors, 

may  make  apjjlication   25,  26 

will  make  oath    25,  26 

patent  may  issue  to   25,  26 

Adverse  decision, 

upon  jireliminary  questions   65,  67,  69 

Affidavits, 

to  overcome  references  on  rejection 66,  75 

in  support  of  application  for  reissue  87 

to  establish  priority  of  invention 94,  110 

after  appeal 141 

Amendments, 

right  to  amend   68 

requisites   of    68,  73,  74 

to  be  signed  both  )iy  inventor  and  assignee  of  undivided 

interest    6,  73 

must  be  written  legibly  on  but  one  side  of  the  paper  ...  45 

on  sheets  of  paper  separate  from  the  original 73 

erasures  and  insertions   73 

to  correspond  to   original  model,  drawing,  or  specifica- 
tion      70 

involving  a  departure  from  original  invention  not  per- 
mitted     70 

not  covered  by  original  oath 48 

of  specification,  if  no  model  or  drawing 48,  70 

to  correct  inaccuracies  or  prolixity 71 

after  claims  are  ready  for  appeal 68 

after  decision  on  appeal,  based  on  discovery  of  Commis- 
sioner            139 

after  notice  of  allowance  78, 165,  166 

291 


Eule 

Amendments — Continued. 

to  applications  in  interference  106,  107,  109 

to  drawings    71 

to  preliminary  statements 112,  113 

to  save  from  abandonment    171 

to  reissues 88 

to  Rules  of  Practice,  to  be  published  in  Official  Gazette  198 
Appeals, 

from  requirement  of  model   56 

to    Examiners    in    Chief    from    Primary    Examiner    on 

merits  of  invention    133 

to  be  in  writing   133 

prerequisites  to   13-4 

Examiner  to  furnish  a  statement  of  the  grounds  of  re- 

j  eetion   135 

appellant  to  furnish  a  brief  of  reasons  of  appeal 137 

oral  hearing  before  Examiners-in-Ohief,  how  obtained  .  .  137 

how  conducted  .  138 
decision  of  Examiners  in  Chief  to  be  confined  to  points 

appealed    139 

but  upon  discovery  of  grounds  for  granting  or  refusing 

a  patent  not  involved  in  appeal,  action 139 

to    Examiners    in    Chief    from    Examiner,    interference 

cases,  patentability  of  claims   124,  143 

to    Commissioner   ujiou    refusal    of    examiner    to    admit 

amendment 68 

upon  objection  that  the  appeal  is  informal 135 

on  preliminary  or  intermediate  questions  for  Examiner  .  142 

to  Commissioner   in   interference  cases    124,  143 

upon  adverse  decisions  by  Examiners 

in   Chief    139 

rehearings     140 

jurisdiction 140 

reconsideration  of  cases  decided  by  a  former  Commis- 
sioner      147 

to  the  Court  of  Appeals  of  the  District  of  Columbia  .  . 

148, 149,  150 

Appijc'ants.     (See  Applications.) 

who  may  ])0   24 

sliouid  transact  their  business  in  writing 4 

jiersoiuil  attendance  unnecessary   4 

required  to  conduct  business  with  decorum  and  courtesy  22 

will  lie  iiifriirncd  of  sciini  niimlier  of  thoii'  application  .  31 

2!)L> 


Eule 
Applications, 

what  ponstitutes  a  cnmiilf^e  a|i]ilic!iti(>ii    oil 

to  wlioni  made    3(J 

may  be  made  by  guardian  of  insane  person 2-3 

must  be  made  by  actual  inventor,  if  alive 26 

if  dead,  by  executor  or  administrator   .  .  .    25,26 

nuist  be  written  in  tlie  English  language 30 

must  be  fded  within  twelve  months  after  foi'eign  ai)pli- 

cation    24 

how  signed  and  witnessed    40 

office  can  not  advise  or  assist  in  preparation  of 14 

all  parts  should  be  filed  at  the  same  time   o2 

incomplete  applications  will  not  be  filed   31 

acknowledgment  of  filing   77 

will  be  stricken  from  the  files  for  irregularities 31 

will  be  numbered  in  regular  series,  commencing  .Tanuary 

1,   1900    31 

to  contain  but  one'invention  unless  connected    41,  42 

when  applicant  makes  two  or  more,  covering  same  in- 
vention, cross  references  required    43 

reservation  for  future  application  not  permitted 44 

data  required  in  letters  concerning 10 

oath  to,  by  applicant    46 

by  applicant  for  reissue   87 

by  executor  or  administrator   47 

by  guardian  of  insane  person    47 

supplemental   to   amendment    48 

before  whom  taken    47 

kept  secret  while  pending  1~> 

when  patented  are  open  for  inspection 16 

examination  of,  order  of   63 

privileged  eases  taking  precedence  in   .  63 

delayed,  if  model  is  condemned 58 

suspended  by  request  77 

in  reissue  cases,  by  whom  signed 85 

what  must  accompany    86 

no  new  matter  to  be  introduced 88 

division   of    89 

original  will  be  reviewed   90 

abandonment  of,  by  failure  to  complete   31,  171 

by  failure  to  prosecute   31,  77,  171 

by  filing  a  formal  abandonment 60,  171 


293 


Rule 

Applications — Continued. 

abandoned  and  forfeited,  not  cited  as  references 177 

copies,  to  whom  furnished  ...  179 

prosecution  of,  defined    77, 171 

renewal  of,  after  abandonment   172 

after   forfeiture    1 75,  176 

new,   after   abandonment   may   be  accompanied   by   old 

model     173 

after  forfeiture  may  be  made  by  any  party  in  in- 
terest     175 

but  within  two  years   175 

old  papers  may  be  used  in  renewal  after  forfeiture  ....  176 

new,  may  be  made  for  claims  not  in  interference 106 

rejected,  certified  copies  of,  to  whom  furnished 179 

rejected,  may  be  appealed  to  Examiners  in  Chief  after 

two  rejections   133 

rules  governing,  filed  prior  to  January,  1898   200 

Arguments, 

oral,  hours  of  hearing   151 

limitation    of    151 

right  to  open  and  close  in  contested  cases 153 

brief  of,  to  be  made  in  appeal  cases,  to  be  previously 

filed   137 

interference  cases,  to  be  previ- 
ously filed    144 

in  contested  cases  should  be  printed 163 

Assignee, 

if  of  entire  interest,  is  entitled  to  hold  correspondence 

with  the  office  exclusively    5,  20 

and  patent  may  issue  to  him 26 

if   of   undivided   part   interest,   correspondence   will   be 

held  with  inventor    6 

and  patent  may  issue  jointly .  26 

may  make  application  for  reissue  of  patent 85 

may  prosecute  or  defend  in  interference   131 

may  file  application  for  renewal  after  forfeiture  ...  175 
patent  will  issue  to,  if  assignment  is  recorded  before 

payment  of  final  fee   188 

Assignments, 

assignability   of  j intents    183 

grant  of  territorial  rights 183 

in  whom  may  be  vested  1S4 

assignees    ('0  ■  •  l^^ 

294 


■Rule 
AsSUiNMENTS — Coiitini((:(P. 

grantees   (b)  .  .  184 

mortgages     (c)  .  .  184 

licenses   ' (d)  . .  184 

must  be  recorded  in  United  States  Patent  Office  to  se- 
cure against  subsequent  conveyance  185 

acknowledgment  before  notary,  prima  facie  evidence  .  .  185 

what  will  be  accepted  for  record  18G 

should  identify  the  patent   186 

conditional   assignments    187 

if  recorded  before  payment  of  final  fee  patent  will  issue 

to   assignee    26,  188 

date  of  receipt  is  date  of  record   188 

receipt  of,  acknowledged 189 

recorded  in  regular  order  and  returned 1 89 

fees  for  recording   ^ 190 

copies  of    190 

orders  for  copies  of,  must  give  liber  and  page 192 

Attorneys  17 

who  may  act  as    17 

advised  to   employ    17 

office  can  not  aid  in  selection   17 

correspondence  to  be  with  them  only 7 

power  of  attorney  must  be  filed  before  any  recognition 

or  privileges  are  extended   18 

given  to  a  firm  not  recognized  unless  all  its  members 

are  named  therein 18 

general  powers  not  recognized  18 

substitution  or  association  of,  wljen  authorized  by  prin- 
cipal      19 

if  not  satisfactory,  power  may  be  revoked 20 

assignments  do  not  operate  as  a  revocation   20 

may  examine  cases  in  attorneys'  rooms,  but  not  in  rooms 

of  the  examiners    21 

personal  interviews  with  examiners 13,  21,  152 

required  to  conduct  business  with  decorum  and  courtesy  22 

may  be  refused  recognition  for  misconduct   22 

as  members  of  Congress  can  not  act  as,  or  be  given  in- 
formation without  a  power  of  attorney,  their  services 

should  not  be  solicited    23 

Bar, 

foreign   patents   a    29 

295 


Eule 

Bar — Colli  i  lined. 

use  will  not  bar  patent  liere,  if  not  patented  Ijy 

another  or  deseriberl  in  printed  publications         27 
inventions  shown  but  not  claimed  in  other  applications 

may  not  be  a    75 

Briefs, 

of  authorities  and  arguments  upon  which  appeal  will  be 

maintained  to  be  filed  before  day  of  hearing 137 

same,  interference  cases   144 

sam.^,  interference  cases  appealed    144 

should  be  submitted  in  printed  form   144,  163 

Certificates, 

of  otficial  character  of  notary  to  be  filed 47 

Claims, 

in  specific  and  distinct  form  must  follow  specification   .  37 

not  in  conflict  in  interference,  may  be  withdrawn  and 

new  application  Iherefor  filed   106 

must  be  twice  rejected  before  appeal   134 

copies  of   rejected  claims  must   accompany  examiner's 

statement  on   appeal    135 

Commissioner, 

appeals   to,   from   examiner    68,  136, 142,  143 

in  interference  cases    124,  143 

from  Examiners  in  Chief   136 

from,  to  the  Court  of  Appeals  of  the  District 

of   Columbia    148 

reconsideration  of  eases  decided  by  former 147 

cases  decided  by,  reopened  only  by  himself 140 

Examiners  in   Chief  reheard  only  by 

written  authority  of    140 

Complaints, 

against  examiners,  how  presented   22 

Composition  of  Matter, 

specimens,  when  required    62 

Copies, 

of    specifications,    drawings,    and    patents   will   be   fur- 
nished at  s-pecified  rates   16,  191 

coufjons  receivable   for    191 

from  works  in  the  library   197 

but  no  translations   furnished    197 

of  iinteiits,  etc.,  referred  to  in   references   will  be  fur- 

nislicd    66 

of  ]pa]iers  in  j)cnding  cases  to  iip|ilicaiits  for  amendment  72 

296 


Kule 

Copies — Cunliniutl. 

of  claims  may  ln'  obtained  hy  ()|)iiosinj^-  ]iarti<'s  in  inter- 
ference      108 

of  motion  papers  and  affidavits  to  be  served 153 

of  forfeited  and  abandoned  files   179 

of  files,  records,  etc.,  made  only  by  the  office 197 

orders  for,  of  assignments  must  contain  liber  and  page  192 

Correction  of  errors  in  letters  patent  170 

Correspondence, 

rules  for  conducting    1-13 

all  business  with  the  office  should  be  transacted  by  .  .  .  1,4 
all  letters  and  communications  to  the  office  to  be  ad- 
dressed to  the  Commissioner  of  Patents 2 

all  letters  from  the  office  to  be  sent  in  his  name 2 

postage,  etc.,  must  be  prepaid  3 

to  be  held  exclusively  with  assignee  of  entire  interest  .  5 

with  inventor  in  case  of  undivided  interest   6 

with  attorney  after  power  is  filed   7 

double,  with  different  parties  in  interest  not  alloweil  .  .  8 

separate  letter  for  each  subject  of  inquiry  required  ...  9 

letters  relating  to  application  should  state 10 

letters  relating  to  patents  should  state   11 

answered  promptly   13 

copy  of  rules  marked  sent  as  respectful  answer  to  cer- 
tain  inquiries    14 

resumed  with  principal,  if  power  is  revoked 20 

discourteous  communications  returned  to  writers 22 

Coupons, 

sold  by  the  office  and  receivable  for  all  printed  copies 

of  specifications  and  drawings    191 

Court  of  Appeals  op  the  District  of  Columbia, 

appeals    to    148-150 

Date,  duration,  and  form  of  patents, 

date  of   167 

never  antedated    167 

duration  of    168 

duration  of  design   168 

what  is  granted  in  a  patent    168 

Depositions.     (See  Testimony.) 

formalities  to  be  observed  in  preparing   155,  156 

certificate  of  magistrate  to  accompany   (3)  .  .  154 

stenographically   taken    156 

297 


Rule 

Depositions — Coniinucd. 

to  be  sealed  up,  addressed,  and  forwarded  to  the  Com- 
missioner of  Patents (3)..  154 

when  taken  must  be  filed   Ci)--  154 

official,  relatives  of  interested  party  not  competent  to 

take   156 

foreign    158 

rules  of  evidence  apply  to  the  taking  of 159 

subpoenas  to  secure  attendance  of  witnesses 160 

printing   of    162 

Delivery, 

of  patents    169 

Design  patents, 

to  whom  granted    24, 79 

for  what  term  of  years   80 

arrangement  of  specification    82 

proceedings  on  applications   81 

models,  when  not  required   83 

drawings   84 

Disbarment, 

of  attorneys  from  practice    22 

Disclaimers, 

who  may  make   181 

grounds,  form,  and  effect 181 

different  kinds  of   182 

fee  required  by  law 181 

Division, 

of    applications    41-42 

Draw^ings, 

required  by  law  when  the  nature  of  ease  admits 49 

must  show  every  feature  of  the  invention 50 

must  be  signed  and  attested   50 

if  of  an  improvement,  must  show  connection  with  old 

structure    50 

three  editions  to  be  printed  and  published  by  the  of- 
fice  when    patented    51 

for    this    purpose    uniform    standard    of   excellence    re- 
quired      52 

papers  and  ink  to  be  used  in  preparation  of (a) .  .  52 

size,  marginal  lines,  and  heading (b) .  .  52 

character  and  color  of  lines  (c) .  .  52 

fewest  lines  possible  to  be  used  and  little  shading (d)  .  .  52 

Hciilc  of  tlic  ili'avving  ;iiid  innnbcr  of  slieets (c)  .  .  52 

298 


Kulo 

iJRAWJNG.s — Continued. 

size,   formation,   and   placing   of  letters   and   fignres   of 

reference    (f )  •  •  52 

like    letters    and    figures    must    reftresent    like    parts 

throughout  the  drawing   (f )  .  .  52 

signatures  to  be  placed  in  corners (g) . .  52 

title,  in  pencil,  upon  back (g) .  .  52 

large  views,  how  arranged   (g)  .  .  52 

preparation  of  figures  specially  for  publication   in  Of- 
ficial  Gazette    (h)  .  .  52 

should  not  be  folded  for  transmission  to  the  office  (i) .  .  52 
no  stamp,  advertisement,  or  address  permitted  on  face 

of    (i)..  52 

new,  required  with  application  for  reissue   53 

signature  to,  and  size  of  drawings  for  reissue  of  pat- 
ents      53 

specific  rules  relating  to  preparation  of  drawing  will  be 

enforced    54 

inferior  or  defective  drawings  will  be  rejected   54 

competent  artist  only  should  be  employed 55 

office  will  furnish  or  amend  drawings  if  requested  ....  54,  55 

amendments  to,  must  conform  to  model  or  specification  70,  88 

may  be  withdrawn  for  correction   72 

mutilations 73 

new,  not  required  in  application  for  renewal  after  aban- 
donment      173 

original,  may  be  used   with   renewal  application  after 

forfeiture   176 

Evidence.     (See  Testimony.) 

established  rules  of  evidence  will  be  api)lied  strictly  in 

all  practice  before  the  office 159 

official  records  and  special  matter  used  as (e)  .  .  154 

none  will  be  considered  on  hearing  not  taken  and  filed 

in  compliance  with  rules    159 

monthly  volumes  of  specifications  and  drawings  are  au- 
thenticated and  admissible  in  courts  as   209 

Examination, 

of  applications,   order  of    63 

privileged  cases  taking  precedence  in   63 

as  to  form  first  made   64 

delayed  if  model  is  condemned   58 

reexamination  after  rejection  if  requested   65 

suspended   77 

299 


Rule 

ExAMiXATiox — Continued. 

reexamination  of  original  upon  reissue   90 

of  papers  by  attorney  not  permitted  without  a  power   .  18 

Examiners, 

appeals  from   68,  135,  139,  142 

complaints  against   22 

personal  interviews  with   13.  21,  152 

digests     1-1 

Exceptions, 

to   testimony    159 

notice  of,  to  be  given  to  office  and  adverse  party 159 

ExECCTCRS.     (See  Administrators.) 

Exhibits, 

accompanying  depositions  in  contested  cases,  how  trans- 
mitted    (c)  .  .        loi 

if  not  withdrawn  after  use,  how  disposed  of 61 

Express  charges,  freight,  etc., 

must  be  prepaid  in  full   3 

Extensions, 

only  by  Act  of  Congress    180 

Fees, 

final,  will  be  called  for  on  allowance  of  patent   164 

if  not  paid  on  or  before  Thursday,  too  late  for 

the  weekly  issue    167 

if  not  paid  within  six  months,  patent  forfeited  .  167,  17-t 

to  whom  it  may  be  paid 167,  194 

new,  required  upon  renewal  after  forfeiture   176 

on  appeal  to  Examiners  in  Chief,  $10 133 

on  appeal  to  Commissioner  from  Examiners  in  Chief.  $20      136 

on  interlocutory  appeals  (no  fee)   142 

on  appeal  to  the  Court  of  Appeals  of  the  District  of 

Columbia,    $15     148 

to  be  paid  in  advance   190 

schedule   of    191 

mode   of   payment 194 

registered   letters    106,  194 

postal  money  orders  206,  194 

money  by  mail  at  risk  of  sender 206,  194 

funds  receivable   206,  194 

money  paid  by  mistake  refunded 208, 195 

Foreign  countries, 

taking   testimony    in    158 

300 


Eule 

Foreign  patents, 

a  bar  to  United  States  patent   unless  application  filed 

within   twelve  months    29 

Foreign  use, 

will  not  bar  a  patent  here  if  not  patented  by  another 

or  described  in  printed  publication    27 

Forfeiture, 

of  patent  by  noiipaynieut  of  final  fee   174 

Gazette.     (See  Official  Gazette.) 

Guardian, 

of   insane   person    25 

Hearings   151, 152 

postponement  of  interference  cases   120 

oral,  before  Examiners  in  Chief  on  appeal 137 

hours  of,  by  the  Commissioner   151 

Examiners  in  Chief   151 

Examiner  of  Interferences 151 

Examiners     13,  152 

before  the  Court  of  Appeals  of  the  District  of  Columbia  150 

Isane  person, 

application  by  guardian  of   25 

Interviews.     (See  Hearings.) 

Interferences, 

defined 93 

in  what  cases  declared   9-4 

preparation    for    95 

failure  to  prepare  for 96 

notice  of,  from  Examiner  to  Examiner  of  Interferences  97 

revision  of  notice  by  Examiner  of  Interferences 98 

points  of  difference  to  be  referred  to  Commissioner  .  . .  99 

jurisdiction  in  cases  of   100,  101 

by  whom  and  how  declared   102 

notice  to  parties   '   1 03 

motion  for  postponement  of  time  of  filing  istatements   .  104 

certified  copies  used  in  place  of  original  papers 105 

claims  not  in  conflict  may  be  withdrawn 106 

distdaimer  to  avoid  interference   107 

amendment  during    106,  107,  101) 

inspection  of  claims  of  opposing  parties   lOS 

inventors  showing,  but  not  claiming    109 

preliminary  statement,  how  prepared,  filed,  oi)ened   ....  110 

when  opened  to  inspection.  Ill 

if  defective,  may  be  amended   112,  113 

301 


Eule 

Interferences — Continued. 

failing  to  file,  judgment  may  be  rendered  on  the  record  114 

subsequent  testimony  alleging  prior  dates  excluded  ....  115 

presumption  as  to  order  of  invention   116 

preliminary  statement  not  evidence   117 

time  for  taking  testimony    118 

failure  to  take  testimony   119 

enlargement  of  time    121 

motion  to  dissolve    122 

non-patentability  argued  at  final  bearing 130 

motion  to  stay  proceedings   123 

appeals  to  Commissioner  and  Examiners  in  Chief    ....  124 
appeals  to  Court  of  Appeals  of  District  of  Columbia  .  .  148-150 

concessions  of  priority    125 

action  in  statutory  bar  appears  126 

second   interference    127 

suspension  of  interference  for  consideration  of  new  ref- 
erences      128 

addition  of  parties  ....  129 

prosecution  or  defense  by  assignee   131 

claims  of  defeated  parties  shall  stand  rejected  132 

appeals  in   143, 146 

Invention, 

shown  but  not  claimed  may  not  bar  other  patents 75 

Issue, 

a  patent  will  issue  upon  payment  of  final  fee 164 

applications  when  withdrawn  from 78,  165,  166 

weekly,  will  close  on  Thursday  of  each  week   167 

will  bear  date  fourth  Tuesday  thereafter 167 

Joint  inventors, 

defined 28 

entitled  to  joint  patent  only   28 

Joint  patents, 

to  joint  inventors  28 

to  inventor  and  assignee   26 

Jurisdiction   140, 153 

after  notice  of  allowance,  Examiner  has  none  over  case  78 

Examiner  has  jurisdiction  till  interference  is  declared  .  100 
resumed  by  Examiner  on  reference  from   Examiner  of 

Interferences  to   determine  patentability    122 

Letters  to  the  offick.     (See  Correspondence.) 

Library, 

regulations  of   197 

copies  will  be  furnished  by  the  ottice  at  usual  rates   .  . .  197 

302 


Eule 
License, 

may  be  oral  or  writteu   (d)  .  .  184 

Model, 

not  rcujuirod  to  be  filed   wit  li  ai)plieatiou    OG 

if  on  examination  one  be  found  necessary  request  there- 
for will  be  made  56 

requisites   of    57 

material  and  dimensions   58 

how   made    58 

name  of  inventor  should  be  permanently  fixed  thereon  .  58 

if  not  strong  and  substantial,  will  be  condemned 58 

working  model,  when  desirable    59 

when  returned  or  withdrawn   56,  60,  61,  72 

when  patented,  open  to  inspection    14-16 

not  to  be  taken  from  the  office  except   in   custody   of 

sworn    employee    60 

filed  as  exhibits  in  contested  eases,  may  be  withdrawn  .  61 
if  not  claimed  within  reasonable  time,  may  be  disjjosed 

of  by  Commissioner   61 

amendments  to,  must  conform  to  drawings  or  specifica- 
tions      70 

when  not  required  for  designs   83 

old,  may  be  used  with  a  new  application 173 

may  be  amended  on  reissue  by  drawings  only 88 

Moneys.     (See  Fees.) 

Motions   153 

to  amend  preliminary  statement   112 

for  postponement  of  time  of  filing  statement 104 

to  dissolve  interference   122, 123 

for  postponement  of  hearing   120 

in  contested  cases 153 

notice   of    153 

proof  of  service    153 

will  not  be  heard  in  absence  of  either  party 153 

will  be  heard  by  153 

right  to  open  and  close  153 

equity  practice  in  eases  to  which  rules  do  not  apply  .  .  .  153 

to  extend  time  for  taking  testimony (d) .  .  154 

to  take  testimony  in  foreign  countries (a)  .  .  158 

Notice, 

of  all  motions  in  contested  cases   153 

of  taking  testimony  in  all  eases   (a)--  154 

303 


Eule 
Notice — Continued. 
Interference  cases, 

to  applicants  who  may  become  parties 10!» 

to  patentees  who  may  become  parties   OH 

to  Examiner  of  Interferences    97 

to  parties  to    103 

of  defective  statement  in   112 

Appeal  cases, 

of  oral  hearings  before  Examiners  in  Chief   137 

Miscellaneous, 

of  use  of  official  records  as  evidence (e) .  .  154 

of  exceptions  to  evidence   159 

of  appeal  to  Court  of  Appeals  of  District  of  Columbia  .  149 

of  allowance  of  patent   164 

new,  to  be  given  if  case  has  been  withdrawn  from  the 

issue    165 

of  adverse  decision  upon  preliminary  question  without 

rejecting  claim  to  be  given  to  applicant 67 

none  given  parties  to  forfeited  cases  of  filing  of  subse- 
quent  applications    178 

to  conflicting  parties  who  have  the  same  attorney   ....  97 

Oath  to  applicatiox   46 

must  be  made  by  inventor  if  alive   26 

when  made  by  administrator  or  executor 25.  47 

in  reissue  cases 46,  87 

additional,  as  to  foreign  patents    46 

supplemental,  to  amendment    48 

officers  authorized  to  administer   47 

certificates  of  officers  administering   47 

new,    required    in    renewal   application    after    abandon- 
ment      173 

original,  may  be  used  in  application  for  renewal  after 

forfeiture   176 

Official  action, 

will  be  based  exclusively  upon  the  written  record 1 

office  can  not  act  as  adviser   14 

Official  business, 

should  be  transacted  in  writing   1 

Official  Gazette    196 

subscription  price   196 

of  single  copies  196 

furnished  to  public  libraries  free   196 

annual  index    196 

304 


Rule 

Official  Gazette — Continued. 

aniendnicnts  to  rules  published  in   198 

one  edition  of  drawings  published  in   51 

one  view  only,  as  a  rule,  shown  in   (h)  •  •  ^- 

rules  for  preparing  a  figure  for  publication  in  .  .  .  (h)  .  .  52 

notice  of  taking  testimony,  contested  cases,   published 

in    (b)..        154 

in  interference  cases   ....        103 
Office  fees.     (See  Fees.) 
Oral  statement, 

no  attention  will  be  paid  to,  if  there  is  any  disagree- 
ment or  doubt 1 

Patents, 

who  may  obtain    24 

in  ease  the  inventor  dies   25,  2(i 

to  assignee  and  inventor   26 

to  joint   inventors    28 

for  what  causes  granted  or  refused   24 

for  designs.     (See  Designs.) 

showing  but  not  claiming  invention   75 

Issue    1 64 

if   not   paid   on   or  before   Thursday,   too   late   for  the 

weekly   issue    167 

final  fee  must  be  paid  or  patent  will  be  withheld 167 

weekly  issue  of,  will  close  on  Thursday   167 

will  bear  date  fourth  Tuesday  thereafter   167 

will  issue  upon  payment  of  final  fee   164 

will  not  be  withdrawn  from  issue  without  apj)roval  of 

Commissioner    78,  165,166 

Date,  duration  and  form, 

will  bear  date  not  later  than   si.\  montlis  from   allow- 
ance          167 

not  antedated    167 

will  contain  title  and  grant  for  seventeen  years 168 

design  patents,  for  three  and  a  half,  seven,  and  fourteen 

years    80,  168 

printed  copy  of  specification  and   drawings  will  he  at- 
tached           168 

Delivery, 

delivered  on  the  day  of  its  date  to  160 

Correction  of  errors  in, 

mistakes  in,  incurr^nl  through  fault  of  the  office,  will  be 

corrected  by  certificate  attached  or  by  reissue 170 

22  305 


Rule 

I  'ATEXTS — Con  t  in  ued. 

not  iiK-urred  throui>h  fault  of  the  oflfice  will  not  be  cor- 
rected            170 

Petition, 

form  and  substance  of   33, 86 

on  formal   questions    142 

Personal  interviews.     (See  Hearing  and  Interviews.) 

personal   attendance  unnecessary    4 

Postage,  etc., 

must  be  paid  in  full   3 

Powers  of  attorney.     (See  Attorneys.) 

Preliminary  statement, 

how  prepared,  filed,  and  opened   110 

may  be  amended  if  defective    112, 113 

failure  to  file    114,  115 

motion  to  postpone  filing  of 104 

not   evidence    117 

Priority  of  invention, 

judgment  of,  interference  cases    125 

protests  against  issue  of  patents   12 

Publications, 

Official    Gazette    198 

annual  index   198 

monthly  volumes  of  specifications  and  drawings 198 

photolithographic  copies  of  drawings 52 

Records,  etc., 

of  office  and  models  of  patented  inventions  open  to  in- 
spection       14, 16 

mutilation    of 73 

may  be  used  as  evidence (e) .  .       154 

notice  of  intent  to  use  them  to  be  given (e)  .  .        154 

Reconsideration, 

of  cases  decided  by  a  former  Commissioner 147 

of  atlverse  decision  upon  a  preliminary  question  upon  re- 
quest of  applicant   65,  67,  69 

Reexamination, 

of  application  will  be  made  if  insisted  upon 65 

References, 

will  he  given  upon  rejection    65 

upon  rejection  for  want  of  novelty,  best  will  be  cited  .  66 

to  be  specifically  stated   66 

copies  of  patents,  etc.,  referred  to  in,  will  })e  furnished 

if  in  possession  of  office   *i^ 

30G 


Bule 

Eeferexce  letters, 

in  drawings,  directions   (f,  g)  .  .  52 

Kefundment, 

of  money  paid  by  mistake   195 

Eehearings, 

on    appeal     140 

Eeissues, 

to  whom  granted  and  in  what  cases  85 

when  the  inventor  or  assignee  must  sign  application  .  . .  53,  85 

what  must  accompany  the  petition   86 

prerequisites 87 

affidavits  in  support  of  application  87 

new  matter  not  to  be  introduced 88 

amendments  may  be  made   88 

separate  patents  for  distinct  parts  may  be  issued 89 

the  original  patent  must  be  surrendered 91 

loss  of  original  patent  must  be  shown  and  a  copy  fur- 
nished      91 

what  may  be  embraced 92 

drawings  and  model  to  be  amended  only  by  each  other  88 

drawings  must  be  new    53 

take  precedence  in  order  of  examination    03 

original  claims  subject  to  reexamination   90 

when  in  interference   94 

to  correct  patent    170 

Rejections  and  References.     (See  References,  Adverse  De- 
cision.) 

formal  objections   04, 67 

applicant  will  be  notified  of  rejection,  with  reasons  and 

references    65 

on  rejection  for  want  of  novelty  best  references  will  he 

cited 00 

requisites  of  notice    06 

on    account    of    invention    shown    by    others    but    not 

claimed,  how  overcome    75,  76 

after  two  rejections  apjieal  may  be  taken  from   Exam- 
iner to  Examiners  in  Chief   133 

Renewal, 

of  application  abaudoncil  by  failui'e  to  complete  or  pros- 
ecute      172 

of  application  forfeited  by  nonpayment  of  final  fee   .  .  175,  176 

Reservation  clauses  not  permitted  44 

307 


Bule 

Service  of  notices, 

in  interference  cases  97, 103 

of  appeal  to  Court  of  Appeals  of  District  of  Columbia       149 

in  contested  cases   153 

proof  of  service    1 53 

for  taking  testimony  (b)  .  .        154 

of  discovery  upon  appeal  of  grounds  for  granting  or  re- 
fusing letters  patent  not  involved  in  the  appeal  ....        139 

Signatures, 

to   applications    26,  30,  85 

to  abandonments    60, 171 

to   specifications    40 

to    drawings (g) .  .   50,  52 

to  models   58 

what  amendments  require  signature  of  applicant  .  .60,  107,  182 

to  disclaimers    107,  182 

to  concessions  of  priority   125 

Specification, 

requirements  of 34-37 

must  set  forth  the  precise  invention   35 

must  point  out  new  improvements  specially 36 

must  refer  by  letters  or  figures  to  drawings 38 

must  conclude  with  specific  and  distinct  claims 37 

order  of  an-angement  in  framing 39 

how  and  by  whom  signed   40 

must  be  legibly  written  on  but  one  side  of  the  paper  ...  45 

amendments  to,  must  conform  to  drawings  or  model,  if 

any    70 

must  be  on  separate  sheets  of  paper  .  .  73 

not  to  be  returned  after  completion 72 

erasures  and  insertions  to  be  clearly  specified 45,  73 

not  to  be  made  by  applicant   .  .  73 

to  be  rewritten,  if  necessary   74 

new,  required  in  renewal  application  after  abandonment       173 
original,  may  be  used  in  renewal  application  after  for- 
feiture           176 

Specimens, 

of  composition  of  matter  to  be  furnished  when  required         62 

Subpoenas, 

for  witnesses  to  he  issued  liy  clerks  of  ITnited  States 

courts    160 

Substitution  of  attorney, 

by  attorney  only  when  he  has  power  of  substitution  ...         19 

308 


Bule 

Telegrams, 

not  received  before  3  p.  in.  answered  the  following  day  13 
Testimony, 

rules  for  taking  and  transmitting,  in  extensions,  inter- 
ferences, and  other  contested  cases 154 

notice-waiver,  reasonable  time  to  travel (a)  .  .  154 

service  of  notice   (b)  .  .  154 

officer 's   certificate    (c)  •  •  154 

time  for  taking,  in  interference  cases  118 

failure  to  take   .  119 
enlargement       of 

time  for  taking  121 

motion  to  extend  time  for  taking (d) ,  .  154 

ofiicial  records,  printed  publications,   etc.,  used  as  evi- 
dence   (e) . .  154 

formalities  in  preparing  dei^ositions    155,  156 

relatives    of    interested    parties   not    competent    as    of- 
ficials to  take    156 

may  be  used  in  other  interferences  when  relevant 157 

evidence  on  hearing  must  comply  with  rules 159 

formal  objections  to    159 

copies  of  testimony  to  be  filed  in  the  office  twenty  days 

before  hearing 162 

how  prepared    162 

to  be  inspected  by  parties  to  the  case  only     161 

can  not  be  withdrawn ;    printing  of   161,  162 

subpoenas  for  witnesses   160 

In  foreign  countries, 

by  leave  of  the  Commissioner,  granted  only  upon  motion 

duly  made    (a)  .  .  158 

interrogations    (c)  .  .  158 

papers  completed,  Commissioner  will  send  them  to  for- 
eign official (d)  .  .  158 

who  will  return  depositions  to  him  under  seal  .  . .  (d)  .  .  158 

stipulations  as  to  written  interrogations (e)  .  .  158 

weight  given  to  testimony  in  foreign  country  .  .  . .  (f )  .  .  158 
Translations, 

only  made  for  official  use    197 

WiTHDRAAVAL, 

cases  withdrawn  from  issue,  how  and  when 78,  165,  166 


309 


INDEX  TO  FORMS. 

Form 

Petition  by  sole  inventor   1 

by  joint  inventors    2 

by  an  inventor  for  himself  and  an  assignee 3 

with  power  of  attorney    4 

by  an  administrator 5 

by  an  exeoutor   6 

by  a  guardian  of  an  insane  person 7 

for  a  reissue  (by  an  inventor,  with  assent  of  assignee)  8 

for  a  reissue   (by  assignee)    9 

for  a  patent  for  a  design 10 

for  the  renewal  of  an  application   12 

Specification  for  an  art  or  process  IB 

for  a  machine   (with  drawings)    H 

for  a  composition  of  matter 15 

for  a  design  (with  drawings)    17 

Oath,  by  a  sole  inventor    (citizen  of  the  United  States  or 

alien)     18 

by  an  applicant  for  a  patent  for  a  design 19 

by  an  applicant  for  reissue  (inventor)    20 

by  an  applicant  for  reissue   (assignee)    21 

supplemental    22 

as  to  loss  of  letters  patent  23 

by  an  administrator  as  to  loss  of  letters  patent 24 

Power  of  attorney  after  application  filed  25 

revocation  of   26 

Amendment    27 

Disclaimer  after  patent    28 

during    interference    29 

A])peals  from  Principal  Examiner  to  Examiners  in  Chief  .  .  30 
Examiner  of   Interferences  to   Examiners   in 

Chief   31 

Examiners  in  Chief  to  Commissioner 32 

Examiners  in  Cliicf  to   Commissioner    (inter- 
ference)      33 

Petition  from  Principal  Examiner  to  the  Commissioner  ....  34 

310 


Eule 

Petition  for  copies  of  rejected  and  aliamldned  apidicutiniis   .  35 

Preliminary  statements  of  domestic  inventor   36 

foreign  inventor    37 

Assignments, 

of  entire  interest  before  issue  of  jiatcnt 38 

in  letters   patent    39 

of  undivided  interest  in  letters  patent   40 

of  territorial  interest  after  grant  of  jjatent   41 

License,    shop-right    42 

License— not   exclusive — with   royalty    43 

Depositions,  notice  of  taking  testimony 44 

form    of    45 

certificate  of  officer   . 46 


INDEX   TO   RULES,   INSTRUCTIONS,   AND   FORMS   IN  AP- 
PEALS TO  COURT  OF  APPEALS  OF  TTTE 
DISTRICT  OF  COLUMBIA. 

Page 
Rules : 

Appeals  from  the  Commissioner   95 

Opinions  of  lower  court  and  Commissioner  made  part  of 

record    96 

Sundays  and  legal  holidays  excluded   97 

INSTRUCTIONS   TO   APPELLANTS    97 

Forms  : 

Appeals,  notice  of,  to  Court  of  Appeals  of  District  of 

Columbia  {ex  parte)   98 

petition  for,  to  Court  of  Appeals  of  District 

of  Columbia    {ex  parte)    99 

notice  of,  to  Court  of  Aj^peals  of  District  of 

Columbia    (interference)    100 

peMtion  for,  to  Court  of  Appeals  of  Distrii-t 

of  Columbia  (interference)    1  U 


311 


GENERAL  INDEX. 

Section 
ABANDONMENT, 

of  application — ground  for  dissolution   77 

ABANDONED    EXPERIMENT    156 

ADMISSIONS, 

of   counsel    201 

AMENDMENT, 

of  issue    (See   Issues)    52-64 

of  preliminary   statement    46-49 

of  motions   244a 

of  assignment  of  errors   248 

AGENT, 

reduction  to  practice  by   138 

ANTICIPATION, 

anticipating  patents  on  motion  to  dissolve 84 

APPLICATION, 

continuous — filing  date   95 

divisional — filing   date    8-93 

sole  and  joint   16 

earlier  application   as  evidence    92-94: 

diligence  in  filing   122-125 

delay  in  filing — discrediting  invention    187 

diligence  in  prosecuting   1 26 

foreign   as  evidence    99 

Al'i'EAL, 

oil  iiiotiiiii  to  anuMid  issue   53 

effect  of  stay  as  to  time  for  appeal   227 

estoppel  by  failure  to   242 

to  KxamiuerH  in   Chief    245 

to  Court  of  Appeals,  D.  C 246 

312 


Section 
AI'PE  AL — Cu)i  1  in  ued. 

wliat  questions  may  be  prcsente<l  on   192 

wliat   not   eonsidcioil    217 

assignment   of  errors    248 

reversal  on  (luestions  of  fact   249 

reversal  on  questions  of  law    2o0 

reco  rd  on  appeal 251 

extending  time  for  filing  record   252 

only  questions  raised  below  considered 247a 

to   the  Commissioner    253 

patentability   of   the   issue    85-254 

by    petition    255 

right  of  appeal  when  denied   256 

on  right  to  make  the  claims  257 

on  motion  to  amend  statement 53 

ASSIGNMENT  OF  ERROES   248 

ASSIGNEE, 

reduction  to  practice  by   137 

ATTORNEY, 

diligence  in  filing  application    125 

admissions  of  at   hearing    201-242a 

BURDEN    OF   PROOF    91 

as  between  applicant  and  patentee    96 

beyond  a  reasonable  doubt   97-159 

as   to   originality    159 

motion  to  shift   98 

on   foreign  application    99 

CLAIMS.     (See  Counts — Issues), 

right  to  make    87 

appeal    on    257 

construction  of   (See  Issues). 

suggested  by  Examiner — when    13 

presented  after  termination  of  interference 233 

effect  of  putting  claim  in  interference 12 

Delay  in  copying  claims  of  a  patent   185 

CONCEPTION, 

evidence   of    • 101 

how   proven    102 

importance  of    105 

313 


Section 

CONCEALMENT   157 

COEEOBORATION, 

what    is    1U3 

who  may  be  corroborating;  witnesses    104 

COUNTS.     (See  Issues— Amendment), 

what  should  be  made    6 

not  forming  a  part  of  the  controversy   11 

rejected  claims  excluded  as 7 

construction   of    27-39 

adding   new    52-64 

new  preliminary  statement — when    42 

must  be  such  that  all  parties  can  make 62 

vague  and  indefinite   76 

COMMISSIONER, 

supervisory   authority   of    255 

appeal  to    253 

petitions  to    255 

jurisdiction  of  pending  appeal 210 

CROSS-EXAMINATION    174 

DATE, 

of  filing — what   is    92 

of  earlier   application    92 

of   divisional    aiiplicatiou    93 

of   invention    102 

DECLARATION.     (See  Interference), 

preliminaries   to    9 

DELAY     (See  Diligence), 

in    lednction  to  practice    115 

]ioverty  as  excuse  for 116 

shifting   res])onsibility   for    IIS 

time  to  exj)eriment 120 

unexplained — effect    124 

in  filing  discredits  iiivcntorsliip   187 

in  coj)ying  claims  of  a  patent — esto|)])i'l    1S5 

sickness  as  excuse  for   119 

314 


Section 

DILIGENCE—    GENERALLY 1U6 

to  what  relates   107 

of  whom  required  108 

when  not  applicable  109 

at  what  time  required   110 

comparative    Ill 

work  on  auxiliary  inventions — effect    112 

work  on  other  forms  of  the  invention — effec-t 113 

work  on  other  inventions — effect   114 

delay  for  business  convenience — effect  115 

commercial  diligence    117 

poverty  as  affecting 116 

shifting  responsibility  for  lack  of   118 

sickness  as  excuse  for  lack  of   119 

Kinds  of  Diligence, 

reasonable    diligence    121 

in   filing    application    122 

of   attorney    125 

in  prosecuting  application    126 

in  reduction  to  practice 133 

DISCLAIMER    88 

judgment  under    203 

DISCLOSURE    (See    Conception— Originality)     102 

failure  to  disclose 186 

DISSOLUTION    65 

motion   to    dissolve    66-68 

extending  time  for  filing    69 

rehearing   on    221 

amendment  of  motion    70 

failure  to  argue  questions  raised — effect 204 

references  on    67 

grounds  for, 

inoperativeness    71 

informality   in    declaring    72 

what  is  not    78 

defects  in  oath  as   73-75 

vague  and  indefinite  issue 76 

on  abandoned  application   77 

non-patentability  of  the  issue  79-154a 

by  whom  determined   80 

315 


Section 
DISSOLUTIOX— Co/i<i«we(7. 

nature  of  right  to  question  81 

effect  on  moving  party   82 

when  motion  should  be  made 83 

character  of  showing  required 84 

appeal  on    85-254 

wlien  considered  by  Commissioner 8G 

no  right  to  make  the  claims 87-154a 

appeal    on    257 

miscellaneous  motions  to  dissolve   89 

DIVISIONAL  APPLICATION— EVIDENCE    93 

DOCUMENTABY  EVIDENCE    (See  Evidence)    127 

DRAWINGS    131 

EMPLOYEE    AND    EMPLOYER— RIGHT    TO    INVEN- 
TION            164 

failure  to  testify 183 

EVIDENCE     90 

confined  to  what  questions   100 

burden  of  proof  (See  Burden  of  Proof)    91 

as  between  applicant  and  patentee 96 

beyond  a  reasonable  doubt   97-159 

earlier  application  as   92-94 

divisional  application  as   93 

continuous  apjilieation  as   95 

disclosure    102 

corroboration  of  inventor   103-104 

conception  (See  Conception). 

diligence  evidence  as  to   (See  Diligence). 

judicial   notice    243 

documentary    127 

official  record    94 

letters    127 

photographs   129 

blue  prints 130 

drawings   131 

exhibits    132-251 

of  reduction  to  practice   133-140 

of  tests  (See  Tests). 

316 


Section 
EVIDENCE— CoHif/iHctZ. 

abandoned  oxpcrimtMit   156 

concealment    .  .  ■  • 1 57 

originality    (See   Originality)    158 

employer  and  emj)loyee — right  to  invention   164 

inoperativeness — evidence   as  to    165 

public  use   166-168 

witnesses  (See  Witnesses). 

examination  of  witnesses   174 

failure  to  produce  sketches — effect   182 

failure  to  rebut    183 

rebuttal    evidence    183-193 

sur-rebuttal    193a 

relevant  to  the  issue — what  is 192 

irrelevant    191 

testimony  taken  in  other  interferences   198 

admissions  of  counsel   201-242a 

newly-discovered    evidence    216 

objections  to   191b 

ESTOPPEL   242 

by  motion  to  dissolve 82 

by  laches  in  copying  claims  of  a  patent   185 

by  failure  to  make  claim  under  Eule  109 242a 

EXHIBITS— MARKING   OF    132-251 

failure  to  produce — effect 182 

EXPERIMENT— ABANDONED   156 

experimenting  as  excuse  for  delay   120 

EXPERT   TESTIMONY    191a 

EXPERIMENTAL  USE    167 

FORMS,                                                                References  are  to  pages 
(For  other  forms,  see  Rules  of  Practice.) 

Affidavit  of  priority 154 

Motion  to  amend  issue   155 

to  substitute  an  application  156 

to  extend  time  for  filing  preliminary  statement  ...  157 

to  amend  preliminary  statement   157 

to  dissolve  interference   158 

to  extend  time  for  taking  testimony 159 

to  use  testimony  taken  in  another  interference  ....  160 

317 


Sectiou 
FOBMS—Coininued. 

to  take  special  testimony 161 

to  shift  burden  of  proof  161 

to  take  testimony  abroad   162 

for  judgment  on  the  record   163 

notice  of  hearing   164 

proof  of  service 164 

stipulation    165 

to  dispense  with  printing  record 165 

to  consolidate  interferences   166 

to  suppress  testimony 167 

petition  for  rehearing   16S 

HEAEING   199-207 

postponement   of    200-207 

judgment   without    203 

statement   of  Examiner  at — review    205 

questions   considered   at    206 

re-hearing   (See  Ee-hearing)    213 

on  motion  to  dissolve 206 

IMPEACHMENT, 

of   witness    177 

by  previous  declarations   188 

IMPEEFECTIONS, 

in  mechanism  134 

INOPEEATIVENESS, 

as  ground   for   dissolution    71 

evidence  of — how  presented   165 

INTEEVENING  EIGHTS    123 

INTEEFEEENCE, 

origin    of    1 

statute  2 

summary  of  proceedings   3 

by  whom   declared    4 

what  applications  included  5 

counts — what  should  be  made   6 

parties  to — arrangcnient  of  (See  Parties). 

no  interference  wIhmi    7 

declaration — prior    ajiplication     8 

318 


Section 
INTERFEEENCE— Cojitivi  HCfZ. 

effect  of  putting  claim  in   12 

sug^gestion  of  claims  under  Rule  96   13 

adding  counts  under  Eulc  109   52-64 

dissolution  (See  Dissolution). 

successive  interferences    228-230 

when   allowed    230 

what  is  determined  by  229 

judgment  in  231 

effect   of  judgment    236 

INVENTION— EIGHT  TO   (See  Employee  and  Employer)  164 

date  of   102 

disclaimer  of   88 

test  of  (See  Test). 

conception  of   (See  Conception). 

conduct  inconsistent  with  claim  to    184 

failure  to  assert  claim  to   185 

failure  to  disclose 186 

ISSUE  (See  Counts,  Claims), 

what    are    23 

construction  of    24 

broadly  construed  25 

exception  to  broad  construction   35 

limitations   upon    26-35 

should  not  be  given  forced  meaning  27 

where  applicant  copies  claims  of  patent 28 

in  the  light  of  what  application   29 

what  elements  are  material   30 

different  meanings  of  claims   31 

in  new  art    32 

prior  art  when  considered    33 

vague — amendment   of    34-76 

amendment  of  issue,  Eule  109   52 

after  motion  to  dissolve   64 

when  motion  to  amend  must  be  made   54 

questions   considered    63 

appeal  53 

re-opening  to  amend    55 

after  thirty  day  limit   56 

after  motion  to  dissolve   57 

after  taking  testimony    58 

319 


Section 
iSSVE—Contitiued. 

substitution  of  patentable  for  unpatentable 59-61 

must  be  such  that  all  parties  can  make 62 

substitution  by  stipulation  60 

JUEISDICTION, 

over  patentability  of  the  issue 80 

petition  to  restore  202-212 

of  Examiner  of  Interferences   208 

of  Examiners  in  Chief   209 

of  Commissioner  pending  appeal    210 

of  courts  over  Avitnesses  in  interferences 211 

JUDGMENT, 

on  the  record  when    237-241 

in  interferences   229-231 

when  res  adjudicata  (See  Ees  Adjudicata). 

effect    of    236 

on  the  record  when  not  permitted   237 

what  questions  are  raised  by  motion   238 

for  failure  to  file  statement  239 

for  failure  to  print  testimony    240 

for  failure  to  take  testimony   241 

JUDICIAL  NOTICE    243 

LACHES  (See  Diligence). 

in  copying  the  claims  of  a  patent 185 

LETTERS, 

as   evidence    127 

copies  of    127 

MACHINE, 

incomplete — reduction  to   jiractice    140 

MECHANICAL  EQUIVALENT    5 

MODEL, 

as  reduction   to  j>racti(e    139 

MOTIONS   244 

forms  of  (See  Forms). 

.']20 


Section 
MOTIONS— Continiior. 

what  questions  may  l)e  presented  by 231a 

to  amend  motion    244a 

NOTICE, 

to  parties   17 

service  of — how   made    19-20 

of  petition   21 

sufficiency  of   22 

of   taking   testimony    18 

of  motions   21 

OATH, 

defects  in  as  ground  for  dissolution   73 

supplemental    oath     75 

OPEEATIVENESS   (See  Inoperativeness)    71 

OEIGINALITY    158 

burden  of  proof  as  to   159 

lack  of — how  established    160 

opportunity  of  derivation   161 

failure  to  rebut  lack  of — effect   162 

proof  of  charge  of  lack  of 163 

presumption  from  failure  to  deny  charge 181 

as  between  employer  and  employee 164 

presumption  from  following  invention  of  another  .  190 

PATENTABILITY   (See  Dissolution— Appeal), 

claims  must  be  patentable   7 

substitution  of  patentable  for  unpatentable   59-61 

appeal    on   patentability    85-254 

PARTIES, 

arrangement    of    14 

who  are  proper  14 

new  parties    15 

sole  and  joint  applicants 16 

notice  to   (See  Notice)    17 

service  of — how   made    19-20 

as  witnesses 179 

conduct  of,  inconsistent  with  claim  to  invention 184 

failure  to  assert  claim  to  invention   185 

23  321 


Section 
PETITION, 

notice   of 21 

to  restore  jurisdiction    202-212 

what  questions  presented  by   255 

PHOTOGEAPH, 

as  evidence    129 

POVERTY, 

as  excuse  for  delay   116 

PROCESS, 

test  of    147 

PRELIMINARY  STATEMENT    36 

motion  to  extend  time  for  filing   39-40 

■when  extension  is  permissible   41 

notice  of  motion   17 

who  may  sign   . 38 

new  statement  when    42 

as  substitute  for  affidavit  under  Rule  75 43 

inspection  of   45 

allegations  in   37-44 

amendment  of   _• 46 

motion  to  amend — shoAving  required 47 

review  of    51 

insufficient    showing     48 

when  permitted 49 

after  taking  testimony    50 

appeal  on  motion   53 

PRESUMPTIONS  ARISING, 

from  failure  to  call  witness  180 

from  failure  to  deny  charge — lack  of  originality 181 

from  failure  to  produce  sketches  182 

from  failure  to  rebut    188 

from  failure  to  disclose  invention   186 

from  experience  and  knowledge 189 

as  to  originality   190 

from  failure  to  assert  claim  to  invention  185 

PRIORITY    (See   Evidence,   Reduction   to    Practice,   Tests, 
Appeal), 

322 


Section 
PRIORITY— C'ovi  t  inued. 

Kvidencc  as  to    100 

ahiiiuloiied    experiment    156 

right  to  make  claims^ — practice   87,  257 

judgment  of — effect   236 

PUBLIC  USE, 

wliat    is    166 

experimental    167 

proceedings  to  establish    168 

REASONABLE  DOUBT— PROOF   97-159 

RECORD, 

suppressed  testimony  how  retained  in   197 

on  appeal   251 

extending  time  for  tiling 252 

REBUTTAL, 

evidence  in 193 

failure  to  rebut    183 

sur-rebuttal    193a 

REDUCTION  TO  PRACTICE, 
diligence  in  (See  Diligence) 

what  is  actual 133 

imperfect    mechanism    134 

crude   mechanism    135 

in  foreign  country   136 

by  assignee   137 

model  as 139 

incomplete  machine    140 

test  of  device  (see  Tests), 

abandoned    experiment    156 

concealment    157 

by  employee  or  employer   164 

RES  JUDICATA, 

What  judgments  are 228-232 

claims  presented  after  interference   233 

motion  to  dissolve  res  judicata   234 

when  prior  motion  is   235 

323 


Section 

RE-HEARING    213 

when  motion  for  may  be  brought   214 

appeal    on    215 

newly  discovered  evidence  as  ground  for 216 

insufficient  grounds  for   218 

stay  of  proceedings   219 

on  account  of  suppressing  testimony 220 

on  motion  to  dissolve    221 

when  second  interference  is  improperly  declared 222 

REOPENING, 

to  amend  issue    55 

RIGHT  TO  MAKE  CLAIMS  (See  Dissolution,  Appeal)    .  .  257 

broad  construction  on   35 

RULES, 

75  affidavit   under    43 

96  decisions  under   13 

107  Disclaimer    88 

109  amendment  of  issue  52 

estoppel  by  failure  to  make  claims   242a 

110  preliminary  statement   36 

113  amendment  of  preliminary  statement    46 

122  dissolution  65-87 

124  decisions  under    53 

130  decisions  under   154a 

154  introduction  of  official  records    94 

157  testimony  in  another  interference 198 

SICKNESS, 

as  excuse  for  delay   119 

STAY  OF  PROCEEDINGS, 

generally 223 

insufficient  grounds  for   224 

to  whom  it  applies   225 

resumption  after  stay   226 

effect  of  stay  as  to  appeal  227 

when  to  consider  reference   83 

STIPULATION, 

amending  issue   60 

324 


Section 
TESTIMONY   (See  Witnesses), 

notice  of  taking  of    18 

relevant  to  issue — what  is   192 

irrelevant    191 

impeachment  of  witness 177-188 

suppression    of    194 

grounds  for   195 

insufficient  grounds    196 

how  retained  in  record   197 

retaking   of    194a 

of   experts    191a 

objections  to   191b 

rebuttal  193 

sur-rebuttal    193a 

taken  in  another  interference — use  of  198 

official  records  as  evidence   94 

TESTS    141 

kind  of  test  required    142 

parts   broken   in — effect    143 

what    must    include    144 

when  must  be  made   145 

of  chemical  compound   146 

of   process    147 

two  forms  of  machine — one  test 148 

evidence  of  success  of   149 

opinions  as  to   150 

description  of  invention  tested   151 

made  at  time  of  trial   152 

presumption  as  to  subsidiary  parts 153 

discrediting    test     154 

operation  of  similar  devices   155 

abandoned    experiment    156 

WAIVER, 

by  failure  to  argue  questions  raised   204 

WITNESSES, 

jurisdiction  of  courts  over  in  interferences 211 

corroborating   104 

subpoena  for    170 

forcing  attendance   171 

refusal  to  testify   .  .  •  • 172 

325 


Section 

WITNESSES— Co/iiim/PfZ. 

solicitor  of  patents  as   173 

cross-examination   of    174 

acts  and  conversations  of   175 

showing  hostility,  bias,  prejudice,  etc 176 

impeachment   of    177 

by  previous  declarations   188 

surprise  by  hostile   178 

failure  to  call— effect    180 

party  as 1 79 

conduct  inconsistent  with  claim  to  invention 185 

failure  to  assert  claim  to  invention 185 


326 


UC  SOUTHERN  REGIONAL  LIBRARY  FACILITY 


AA    000  857  041     8 


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